UNIVERSITY 

OF  CALIFORNIA 

LOS  ANGELES 


SCHOOL  OF  LAW 
LIBRARY 


TEXT-BOOK 


OF 


THE    PATENT    LAWS 


OF 


THE  UNITED  STATES  OF  AMERICA. 


BY 

ALBERT    H.    WALKEJR, 

OF  THE  HARTFORD  BAR. 


« 


NEW  YORK: 

L.   K.   STROTJSE  &  CO.,   LAW  PUBLISHERS. 

95  NASSAU  STREET. 
1885. 

LIBRARY  Of 


YORK  COUNT  f 
ASSOCIATION 


COPYRIGHT,  1883, 

1JT 

ALBERT  EL  WALKER 


20078 


PREFACE. 


THE  Constitution  and  the  statutes  of  the  United  States, 
together  with  twelve  hundred  and  forty-six  Federal 
and  State  judicial  decisions,  are  the  principal  sources 
from  which  the  materials  for  this  text-book  were  drawn. 
The  most  extensive  treatise  heretofore  published  on  the 
same  subject,  was  published  in  1873  ;  but  it  cited  only 
two  hundred  and  eighty  American  cases,  together  with 
one  hundred  and  sixty -one  English  adjudications.  The 
inadequacy,  to  the  needs  of  the  profession,  of  a  treatise 
so  limited  in  scope,  was  clearly  impressed  upon  me  when 
I  entered,  in  1877,  upon  a  somewhat  extended  practice  in 
patent  litigation.  During  the  next  four  years,  I  was 
called  upon  to  argue  several  patent  cases  in  the  Supreme 
Court,  and  many  others  in  many  of  the  Circuit  Courts 
of  the  United  States  ;  and  in  preparing  those  arguments, 
I  was  forced  to  make  many  laborious  researches,  from 
which  a  complete  text-book  would  have  largely  relieved 
me.  Under  these  circumstances,  I  resolved,  early  in 
1881,  to  undertake  the  production  of  a  treatise  so  much 
needed  by  the  profession.  I  began  writing  on  the  first 
day  of  May  of  that  year,  and  soon  became  so  much  inter- 
ested in  the  work,  that  I  largely  suspended  my  active 
practice  of  the  law,  in  order  to  give  the  book  the  freshest 
of  my  efforts,  and  thus  the  greatest  degree  of  merit  con- 


IV  PREFACE. 

sistent  with  my  abilities.  The  resulting  treatise  covers 
the  entire  field  of  the  patent  laws  of  the  United  States, 
as  those  laws  were  enacted  in  the  statutes  and  developed 
in  the  decisions,  from  the  foundation  of  the  national 
government  in  1789,  down  to  the  first  day  of  September, 
1883.  How  accurately  and  well  it  covers  that  field,  is 
a  question  which  belongs  to  the  bar  and  to  the  bench  ; 
and  to  the  generous  judgment  of  the  bench  and  of  the  bar, 
I  commit  the  result  of  my  long  and  interesting  labor. 

A.  H.  W. 

HARTFORD,  CONNECTICUT, 
September  26,  1883. 


TABLE  OF  CONTENTS. 


CHAPTER  I. 

THE   SUBJECTS   OF  PATENTS Pages  1-16 


1.  Constitutional  and  statutory  foun- 
dation of  the  patent  laws. 

2.  Constitutional      and       statutory 
meaning    of     the    word      "  dis- 
covery." 

3.  Patent  law  meaning  of  the  word 
"art." 

4.  Patent  law  meaning  of  the  word 
"process,"  as  illustrated   in   the 
case  of  Corning  v.  Burden. 

5.  Patent  law  meaning  of  the  word 
"process,"  as  illustrated  by  the 
case  of  MacKay  v.  Jackman,   and 
by  other  Circuit  Court  cases. 

6.  Patent  law  meaning  of  the  word 
"process,"  precisely  defined. 

7.  Difference  between  a  patent  for  a 
"process,"    and   a   patent   for    a 
"principle,"  inquired  into. 

8.  Illustrated  by  the  case  of  McClurg 
v.  Kingsland. 

9.  Illustrated  by  the  case  of  O'Reilly 
v.  Morse. 


10.  Illustrated  by  the  case  of  Mowry 
v.  Whitney. 

11.  Illustrated  by  the  case  of  Tilgh- 
man  v.  'Proctor. 

12.  Illustrated    by    the   four    cases 
when  compared. 

13.  Illustrated    by    the    four    cases 
when  contrasted. 

14.  Deduced  from  the  four  cases  as 
compared  and  contrasted. 

15.  Illustrated  by  the  eighth  claim 
of  Morse. 

16.  Machines,  and  improvements  of 
machines. 

17.  Manufactures. 

18.  Compositions  of  matter. 

19.  Distinction   between  machines, 
manufactures,  and  compositions 
of  matter. 

20.  Designs. 

21.  On  whose  invention  designs  are 
patentable. 

22.  Utility  and  beauty  of  designs. 


CHAPTER  II. 

INVENTION  . .  .  .Pages  17-35 


23.  Invention   necessary   to  patent- 
ability, 

24.  Many    negative    rules,    but    no 
affirmative  rule,  for  determining 


the   presence    or  absence  of  in- 
vention. 

25.  Mere    mechanical     skill   is  not 
invention. 


VI 


CONTENTS. 


26.  Circumstances  indicating  differ- 
ence  between  invention  and  me- 
chanical skill. 

27.  Excellence  of  workmanship    is 
not  invention. 

28.  Substitution  of  materials  is  not 
invention. 

29.  Exception  to  the  last  rule. 

30.  Enlargement  is  not  invention. 

31.  Change  of  degree  is  not  inven- 
tion. 

32.  Aggregation  is  not  invention. 

33.  Simultaneousness   of    action    is 
not  necessary  to  invention. 

34.  Duplication  is  not  invention. 

35.  Omission  is  not  generally  inven- 
tion. 

36.  Substitution    of    equivalents   is 
not  invention. 

37.  New  combination,  without  new 
mode  of  operation,  is  not  inven- 
tion. ' 

38.  Using  old  thing  for  new  purpose 
is  not  invention. 


39.  Cases  to  which  the  last  rule  docs 
not  apply. 

40.  Doubts    relevant   to   invention, 
when    otherwise    insoluble,    are 
solved  by  ascertaining   compar- 
ative utility. 

41.  Form. 

42.  Questions  of  invention  are  ques- 
tions of  fact. 

43.  Questions    of    invention    some- 
times investigated  in  the  light  of 
the  state  of  the  art. 

44.  Joint  and  sole  inventions. 

45.  How  made. 

46.  How  distinguished. 

47.  Suggestions  to  an  inventor. 

48.  Information  sought  by    an  in- 
ventor. 

49.  Mechanical  skill  not  necessary  to 
invention. 

50.  Sole  patent  to  one  joint  invent- 
or is  void. 

51.  Joint  patent  to  sole  inventor  and 
another  is  void. 


CHAPTER  III. 

NOVELTY Pages  36-51 


52.  Novelty     necessary    to     patent- 
ability. 

53.  Novelty  defined. 

54.  Not  negatived  by  knowledge  or 
use  in  a  foreign  country. 

55.  Not  negatived  by  private  patent 
granted    in     a     foreign     coun- 
try. 

56.  Prior  printed  publications. 

57.  Fullness   of    prior  patents   and 
printed  publications. 

58.  Novelty   not  negatived   by   any 
abandoned  application. 

59.  Qualification  of  the  last  rule. 

60.  Successful  prior  applications. 

61.  Novelty  not  negatived  by  any  un- 
published     drawing,    or     prior 
model. 


62.  Novelty  not  negatived   by  any- 
thing substantially  different. 

63.  Abandoned  experiments. 

64.  Novelty  in  cases  of  designs. 

65.  Novelty  not  negatived  by  any- 
thing    apparently     similar      or 
chemically    identical,    but  prac- 
tically useless. 

66.  Novelty  not    negatived  by  an- 
tiquity of  parts. 

67.  Novelty  not  negatived  by  prior 
accidental   and    not   understood 
production. 

68.  Novelty   not   negatived  by   any 
thing  neither  designed,   nor  ap- 
parently  adapted,    nor    actually 
nsed  for  the  same  purpose  as  the 
invention. 


CONTENTS. 


Vll 


R9.  Comparative  dates. 

70.  Dates  of  patented  inventions. 

71.  Novelty  is  negatived  by  one  in- 
stance of    prior    knowledge  and 
use  in  this  country. 

72.  Novelty    is   negatived  by  prior 
making  without  using. 

73.  Inventor's  lack  of  knowledge  of 


anticipating     matter    is     imma- 
terial. 

74.  Old    thing    derived    from    new 
source. 

75.  Questions   of  novelty  are  ques- 
tions of  fact. 

76.  Burden    of    proof    relevant    to 
novelty. 


CHAPTER  IY. 

UTILITY Pages  52-56 


77.  Utility  necessary   to  patentabil- 
ity. 

78.  Utility  is  negatived  by  lack  of 
function. 

79.  Perfection  not  necessary  to  util- 
ity. 

80.  Beauty  has  utility. 

81.  Utility  is  negatived  where  func- 
tion is  evil. 


82.  Functions      which      sometimes 
work  evil,   and  sometimes  work 
good. 

83.  Functions   thought    by  some  to 
be    good,   and   by  others    to  be 
bad. 

84.  Good  functions  in  wrong  places. 

85.  Doubts  revel  ant  to  utility  to  be 
solved  against  infringers. 


CHAPTER  Y. 

ABANDONMENT Pages  57-71 


86.  The   several   sorts  of   abandon- 
ment. 

87.  Abandonment  of  inventions. 

88.  Actual  abandonment  of   inven- 
tions. 

89.  Actual  abandonment  by  express 
declaration. 

90.  Actual  abandonment  by  formal 
disclaimer. 

91.  Actual    abandonment    resulting 
from  laches  before  application. 

92.  Actual   abandonment    resulting 
from  laches  after  application  and 
before  issue  of  letters  patent. 

93.  Constructive    abandonment   be- 
fore application. 

94.  "Public  use,"   denned  and  de- 
lineated. 

95.  Experimental  use. 


96.  "On  sale,"  delineated   and   de- 
fined. 

97.  Sale  of  inchoate  right  to  a  patent. 

98.  Degree   of    identity   necessarily 
involved  between  the  thing  con- 
structively   abandoned    and  the 
thing  patented. 

99.  Making,  works   no   constructive 
abandonment. 

100.  Public     knowledge    works    no 
constructive  abandonment. 

101.  Public  use  or  sale  in  a  foreign 
country. 

102.  Consent. 

103.  Constructive  abandonment  af- 
ter application,  and  before  issue 
of  letters  patent. 

104.  Rules  of  constructive  abandon- 
ment are  inflexible. 


vni 


CONTENTS. 


105.  Surrender  of  letters  patent. 

106.  Abandonment  of  invention  af- 
ter letters  patent,  unknown  to 
the  law. 


107.  Acquiescence  in  unlicensed  use 
of  patented  invention. 

108.  Questions  of  abandonment  are 
questions  of  fact. 


CHAPTER  VI. 

APPLICATIONS Pages  72-98 


109.  Constituents    of     applications 
for  patents. 

110.  The  petition. 

111.  Constituents  of  specifications. 

112.  The  preamble. 

113.  The   general   statement  of  the 
invention. 

114.  The   description  of  the   draw- 
ings. 

115.  The  detailed  description  of  the 
invention. 

116.  The  claim  or  claims. 

117.  Claims  in  machine  patents. 

118.  Claims  in  patents  for  manufact- 
ures. 

119.  Claims  in  patents  for  composi- 
tions of  matter. 

120.  Claims  in  process  patents. 

121.  The  signatures. 

122.  The  form  of  the  oath. 

123.  The  constituents  of  the  oath. 

124.  Affirmations. 

125.  The  Patent-Office  fees. 

126.  Drawings. 

127.  Models. 

128.  Specimens   of  compositions  of 
matter. 

129.  Dates  of  applications. 

130.  The  examination  by  the  Patent 
Office. 


131.  Notification  of  rejection. 

132.  Appeals. 

133.  Appeals  to  the  Supreme  Court 
of  the  District  of  Columbia. 

134.  Bills  in   equity  to  compel  the 
Commissioner  to   grant   a  pat- 
ent. 

135.  Amendment  of  applications. 

136.  The  foundation  of  the  right  of 
amendment. 

137.  When  an  applicant  may  amend. 

138.  How  an  applicant  may  amend. 

139.  When  an  applicant  must  amend . 

140.  Interferences. 

141.  Number  of  interferences. 

142.  Decision  on  interference  is  not 
conclusive. 

143.  Caveats. 

144.  No   appeal   from  the  Commis- 
sioner in  interference  cases  ; 
but  relief  by  bill  in  equity. 

145.  Abandonment  of  applications. 

146.  Constructive    abandonment  of 
applications. 

147.  Constructive    abandonment   of 
application   working    construc- 
tive abandonment  of  invention. 

148.  Effect   of    Commissioner's   de- 
cision on  questions  relevant  to 
applications. 


CHAPTER  VII. 

LETTERS  PATENT Pages  99-1:54 


149.  No   exclusive   right   to    inven- 
tions, at  common  law. 


150.  Constitutional  exclusive   right      151.  Patents  are  property. 


to    inventions   in   the     United 
States. 


CONTENTS. 


IX 


152.  Dignity  of    property  in    pat- 
ents. 

153.  Patents  are  not  odious  monopo- 
lies. 

154.  Patent  rights  are  absolute,  not 
qualified. 

155.  Patent  rights  are  beyond  State 
interference. 

156.  Patent  rights  are  not  subject  to 
common    law     executions,    but 
may  be  subjected  by  creditors' 
bills  in  equity. 

157.  Patent  rights  are   as  exclusive 
of  the  government,  as  they  are 
of  any  citizen. 

158.  Patents  do  not  cover  specimens 
purchased  of   the   inventor,   or 
made  with   his  knowledge  and 
consent,      before      application 
therefor. 

159.  The  foregoing  rule  has  no  ap- 
plication to  patents  for  process- 
es. 

160.  Territorial     scope    of    United 
States  patents. 

161.  Operation    of    United     States 
patents  on  the  decks  of  ships. 

162.  Duration  of  patents. 

163.  Duration  of  United   States  pat- 
ents for  inventions  first  patent- 
ed in  a  foreign  country,  accord- 
ing to  the  statute  of  1870. 

164.  Duration  of  United  States  pat- 
ents for  inventions  first  patent- 
ed in  a  foreign  country,  accord- 
ing to  the  statute  of  1839. 

165.  Duration  of  United  States  pat- 
ents for  inventions  first  patent- 
ed in  a  foreign  country,  accord- 
ing to  the  statute  of  1861. 

166.  First  opinion  of  the   question 
stated  in  Section  165. 

167.  Second  opinion  of  the  question 
stated  in  Section  165. 

168.  Third  opinion  of  the   question 
stated  in  Section  165. 


169.  Keview  of  the  three  opinions 
of  the  question  stated  in  Section 
165. 

170.  Beginning    of    the    terms    of 
United  States  patents. 

171.  To  whom    letters    patent  are 
granted  by  the  government. 

172.  Letters  patent  as  documents. 

173.  The  specification. 

174.  The  description. 

175.  The  description. 

176.  The  claim  or  claims. 

177.  The  claim  or  claims. 

178.  Particularity    in     descriptions 
and  claims,  are  conditions  pre- 
cedent to  validity. 

179.  Questions  of  sufficiency  of  par- 
ticularity  of    descriptions  and 
claims,  are  questions  of  fact  and 
not  Of  law. 

180.  Plurality  of  inventions  in   one 
letters  patent. 

181.  Construction  of  letters  patent. 

182.  Claims  to  be   construed  in  the 
light  of  descriptions. 

183.  Construction      of      functional 
claims. 

184.  Claims   construed  in  the  light 
of  the  state  of  the  art. 

185.  Proper  liberality   of  construc- 
tion. 

186.  Proper  strictness   of  construc- 
tion. 

187.  Construction    in  the    light   of 
contemporaneous    construction 
of  the  inventor. 

188.  Construction   in     the  light   of 
contemporaneous  statutes 

189.  Questions  of  construction  are 
questions  of  law  and  not  of  fact. 

190.  Letters  patent  presumed  to  be 
for  same   invention  as  the   ap- 
plication therefor. 

191.  Letters  patent  are  constructive 
notice  of  their  contents  to  every 
person. 


CONTENTS. 


CHAPTER  VIII. 
DISCLAIMERS Pages  135-146 


192.  Statutory  authorization  of  dis- 
claimers. 

193.  Statutory    prescriptions,    rele- 
vant to  disclaimers. 

194.  Errors  which  justify  disclaim- 
ers. 

195.  Mistakes  of  fact,   relevant  to 
novelty. 

196.  Mistakes  or  law,  relevant  to  in- 
vention. 

197.  Claims  void  for  want  of  utility. 

198.  Combination  claims. 

199.  Compound  claims. 

200.  Immaterial  claims. 

201.  Reissue  claims. 


202.  Fraudulent  or  deceptive  inten- 
tion. 

203.  Effect  of  unreasonable  delay  to 
file  a  disclaimer. 

204.  Beginning  of  unreasonable  delay 
to  file  a  disclaimer. 

205.  Costs,  where  a  necessary  dis- 
claimer has  not  been  filed. 

206.  Extent  of  disclaimant's  interest. 

207.  Construction  of  letters  patent 
after  a  disclaimer. 

208.  Disclaimers  filed  pending  lit- 
igation. 

209.  Disclaimers  demanded  by  ju- 
dicial decisions. 


CHAPTER  IX. 

REISSUES Pages  147-182 


210.  Beginning  of  the  history  of  re- 
issues. 

211.  First  statute  providing  for  re- 
issues, 1832. 

212.  Reissues  under  the  Patent  Act 
of  1836. 

213.  Amendments  made  in  the  re- 
issue law,  by  the  Patent  Act  of 
1837. 

214.  Reissues  under  the  Patent  Act 
of  1870. 

215.  Reissues    under    the    Revised 
Statutes. 

216.  Subjects  of  reissues. 

217.  The     words     "specification," 
"  defective,"  and    ' '  insufficient' ' 
defined. 

218.  Faults  which  justify  reissues. 

219.  Faults  in  claims  which  justify 
reissues. 

220.  Inadvertence,     accident,     and 
mistake. 

221.  Question  of  the  conclusiveness 


of  the  Commissioner's  decision 
relevant  to  existence  of  reissua- 
ble  faults,  and  relevant  to  the 
existence  of  inadvertence,  acci- 
dent, or  mistake. 

222.  The  question   of  the  last  sec- 
tion discussed  and  supported  in 
the  affirmative. 

223.  The   same   question   discussed 
and  supported  in  the  negative. 

224.  Great  importance  of  the  ques- 
tion. 

225.  The  text    writer's  opinion  of 
the  true  answer. 

226.  The  doctrine    of    the  case  of 
Miller  v.  Brass  Co. 

227.  The  length  of  the  delay  contem- 
plated by  the  doctrine  of  Miller 
v.  Brass  Co. 

228.  Effect  of   delay  in  other  cases 
than  those  of  broadened  claims. 

229.  The    statute   relevant   to  two 
years'    prior    use   or    sale,  has 


CONTENTS. 


XI 


no  application   to   reissues   as 
such. 

230.  Surrender  of  patent. 

231.  Effect  of  surrender  with,  and 
also  without  reissue. 

232.  Eeissues  of    reissued    patents 
and    of  extended  patents,   but 
not    of    expired    patents,     are 
proper. 

233.  Same  invention. 

234.  Same   invention   does   not  in- 
clude whatever  was  produced  by 
the  patentee  before  the  original 
patent. 

235.  Same     invention    is  not   con- 
fined to   invention   claimed   in 
original. 

236.  Inventions  shown  in  drawings 
and  inventions  shown  in  mod- 
els. 

237.  Inventions  shown  in  drawings 
only. 

238.  Inventions   shown    in  models 
only. 

239.  "  Where  there  is  neither  model 
nor  drawing." 

240.  New  matter. 

241.  Rule    for    ascertaining  same- 


ness of  invention  ;  and  qualifica- 
tions of  that  rule. 

242.  Reissues  must  be  for  same  in- 
vention as  prior   reissues,  and 
also  for  same  invention  as  orig- 
inals. 

243.  Legal  presumption  of  sameness 
of  invention. 

244.  Omission,   as  it  affects  same- 
ness of  invention. 

245.  Reissues  for  sub-combinations. 

246.  Reissues  for  single  devices. 

247.  Reissues  as  affected  by  substi- 
tution of  equivalents. 

248.  Reissues  entitled  to  a  liberal 
construction. 

249.  Reissued  patents  may  be  valid 
as  to   some   claims  while  void 
as  to  others. 

250.  Executors,  administrators,   and 
assigns  may  procure  reissues. 

251.  One  of  several   executors  may 
procure  a  reissue. 

252.  Rights  of  assignees  in  reissues, 

253.  The   rights  of  grantees  in  re- 
issues. 

254.  The    legal    effect  of    reissued 
patents. 


CHAPTER  X. 

EXTENSIONS Pages  183-194 


255.  Constitutional    foundation    of 
extensions. 

256.  Congressional  extensions. 

257.  Mode  of  Congressional   exten- 
sion. 

258.  Effect  of  Congressional   exten- 
sions. 

259.  Patent  Office  extensions. 

260.  Statutory  foundation  of  Patent 
Office  extensions. 

261.  Who  might   apply  for  Patent 
Office  extensions. 

262.  Points  of  time   whereon   Pat- 


ent Office  extensions  were  grant- 
able. 

263.  Patent  Office  extension  might 
be  granted   to  an   inventor-pat- 
entee,   even   if   he   had   parted 
with  all  interest  in  the  first  term 
of  his  patent. 

264.  Patent  Office  extentions  granta- 
ble  only  where  inventors  would 
possess,  or  at  least  participate 
in,  the  benefit  thereof. 

265.  Patent   Office    extension,    how 
effectuated. 


Xll 


CONTENTS. 


266.  Force   of    the   Commissioner's 
decision  in  extension  cases. 

267.  Facts  which  justify  extensions. 

268.  Proceedings  preliminary  to  ex- 
tensions. 

269.  Remedy  for  fraud  in  procuring 
or  in  granting  extensions. 


270.  "The  benefit  of  the  extension  of 
a  patent  shall  extend  to  the   as- 
signees and  grantees  of  the  right 
to  use  the  thing  patented,  to  the 
extent  of  their  interest  therein." 

271.  Adjudged  meaning  of  the  stat- 
ute quoted  in  the  last  section. 


CHAPTER  XL 

TITLE Pages  195-215 


272.  The  nature  of  titles,   and  the 
methods  of  their  acquisition. 

273.  Title  by  occupancy. 

274.  Title  by  assignment. 

275.  Characteristics,  authentication, 
and  effect  of  assignments. 

276.  Dormant  assignments. 

277.  Assignments  of  rights  of  action 
for  past  infringements. 

278.  Construction  of  assignments. 

279.  Reformation  of  assignments. 

280.  Assignments  of  extensions. 

281.  Recording  and  notice. 

282.  Warranty  of  title. 

283.  No  implied  warranty  of  validity. 


284.  Express  warranties  of  validity. 

285.  Equitable  titles  ;  how  created. 

286.  Equitable  titles  ;  how  treated. 

287.  Title  by  grant. 

288.  Extra  territorial  rights  convey- 
ed by  grants. 

289.  Title  by  creditor's  bill. 

290.  Title  by  bankruptcy. 

291.  Title  by  death. 

292.  -Tenancy    in    common.     Joint- 
tenancy. 

293.  Joint-tenancy  ;  how  severed. 

294.  Eights  of  tenants  in  common  as 
against  each  other. 

295.  Partition. 


CHAPTER  XII. 

LICENSES Pages  216  -227 


296.  Licenses  denned  and  described. 

297.  Express  licenses  to  make,  with 
implied  leave  to  use,  or  implied 
leave  to  sell  the  things  made. 

298.  Express   licenses  to  use,  with 
implied  leave  to  make  for  use. 

299.  Express  licenses  to  sell,  with 
implied  leave  to  the  vendees  to 
use  and  to  sell  the  things  they 
purchase. 

300.  Licenses  to  make  and  use,  with- 
out implied  leave  to  sell. 

301.  Licenses  to  make  and  sell,  or 
to  nse   and   sell,  with  implied 


leave  to  the  vendees  to  use  and 
to  sell  the  articles  they  buy. 

302.  Express   licenses  so  restricted 
as  not  to  convey  implied  rights. 

303.  Written  and  oral  licenses. 

304.  Recording  and  notice. 

305.  Licenses  given  by  one  of  sev- 
eral owners  in  common,  and  li- 
censes given  to  one  of  several 
joint  users. 

306.  Construction  of  licenses. 

307.  Warranty  and  eviction. 

308.  Clauses  of  forfeiture. 

309.  Effects  of  forfeiture. 


CONTENTS. 


Mil 


310.  Assignability  of  licenses. 

311.  Purely  implied  licenses. 

312.  Implied  licenses  from  conduct, 
and  first  by  acquiescence. 


313.  Implied  license  from  conduct 
by  estoppel. 

314.  Implied  license  from  actual  re- 
covery of  damages  or  profits. 


CHAPTER  XIII. 

INTERFERING  PATENTS Pages  228-233 


315.  Causes  and  characteristics  of 
interfering  patents. 

816.  Actions  in  equity  between  inter- 
fering patents. 

317.  The  proper  issue   in   such  ac- 
tions. 

318.  The  force  of  the  decision  of  the 


Commissioner  of  Patents  on  a 
prior  interference  in  the  Patent- 
Office. 

319.  Injunctions  in  interference  ac- 
tions. 

320.  The  proper    decrees    in    such 
actions. 


CHAPTER  XIV. 

REPEAL   OF   PATENTS Pages  233,  234 


321.  Patents  obtained   by  fraud,  or 
granted  by  mistake. 

322.  Jurisdiction  of  equity  to  repeal 


patents  so  obtained  or  so  grant- 
ed. 
323.  Practice  in  such  cases. 


CHAPTER   XY. 


QUI   TAM   ACTIONS Pages  235-240 


324.  Qui   tarn   actions,  defined   and 
described  as  they  exist   in  the 
patent  laws. 

325.  The    wrongs    which     are    the 
foundations  of  such  actions. 

326.  The   first   two   of  those   three 
classes  of  wrongs. 

327.  The  third  of  those  three  classes 
of  wrongs. 

328.  Wrongs  of  either  class  are  com- 
pleted   when    the    articles    are 
illegally   marked,   without    any 
subsequent  using  or  selling. 


329.  The  amount  of  the  recoverable 
penalty. 

330.  The    plaintiff     must     be     one 
natural  person. 

331.  The  forum  for  qui  tarn  actions. 

332.  The  form  of  the  suit,  and  the 
requisites   of   a   declaration,   in 
such  an  action. 

333.  Injunctions  to  restrain  the  com- 
mission of  wrongs  of  either  of 
the  first  two  classes. 

334.  Appeals  in  qui  tain  cases. 


XIV 


CONTENTS. 


CHAPTER  XVI. 

INFRINGEMENT Pages  241-272 


335.  Infringement   of  process   pat- 
ents, illustrated  by  the  case  of 
Tilghman  v.  Proctor. 

336.  Illustrated  by  the  case  of  Mowry 
v.  Whitney. 

337.  Illustrated  by  the  case  of  Coch- 
rane  v.  Deener. 

338.  Equivalents  in  processes. 

339.  Infringement    of    patents    for 
machines  or  manufactures. 

340.  Comparative  results. 

341.  The  test  of  comparative  modes 
of  operation. 

342.  Comparative  modes  of  operation 
as  illustrated  by  the  case  of  the 
Cawood  patent. 

343.  As   illustrated  by  the  Driven- 
Well  cases. 

344.  As   illustrated  by  Blanchard's 
patent    for    turning     irregular 
forms. 

345.  As     illustrated    by     Hayden's 
Brass-Kettle  machine. 

34G.  As   illustrated   by   the  case  of 
Burr  v.  Duryee. 

347.  Addition. 

348.  Transposition  of  parts. 

349.  Omission. 

350.  Substitution. 

351.  Equivalents  inquired  into. 

352.  The  test  of  sameness  of  func- 
tion. 

353.  The  test  of  substantial  sameness 
of  way  of  performance. 

354.  Question  of  the  necessity  of  age 
in  equivalents,  stated  and  con- 
sidered in  the  light  of  the  views 
of  Justice  CLIFFORD. 

355.  The  same  question  considered 
in  the  light  of  the  cases  of  Mason 
v.  Graham  and  Clough  v.  Mfg. 
Co. 

356.  The  same  question  considered 


in  the  light  of  sundry  Circuit 
Court  cases. 

357.  The  same  question  considered 
in  the  light  of  the  case  of  Potter 
v.  Stewait. 

358.  Review  of  the  question  consid- 
ered in  the  last  four  sections. 

359.  Primary  and   secondary  inven- 
tions in  respect  of  the  doctrine 
of  equivalents. 

360.  Primary  inventions  considered 
in  this  respect. 

361.  Secondary   inventions    consid- 
ered in  the  same  respect. 

362.  Review  of  the  matters  consid- 
ered in  the  last  three  sections. 

363.  Changes  of  form  considered  in 
respect  of  qiiestions  of  infringe- 
ment. 

364.  Subject  of  the  last  section  illus- 
trated by  the  case  of  Strobridge 
v.  Lindsay. 

365.  Illustrated  by  the  case  of  Ives  v. 
Hamilton. 

366.  Illustrated  by  the  case  of  Morey 
v.  Lockwood. 

367.  Illustrated  by  the  case  of  the 
American  Diamond  Rock  Boring 
Co.  v.  The  Sullivan  Machine  Co. 

Illustrated  by  the  case  of  Eliza- 
beth v.  Pavement  Co. 

Infringement  of  patents  for 
compositions  of  matter. 

370.  Substitution  of  ingredients. 

371.  Substitution  of  ingredients  as 
illustrated  by  the  Giant-Powder 
cases. 

3"2.  Disclaimers  of  particular  equi- 
valents. 

373.  Changes  of  the  proportions  in 
compositions  of  matter. 

371.  The  various  classes  of  composi- 
tions of  matter. 


CONTENTS. 


XV 


375.  Infringement  of  patents  for  de- 
signs. 

376.  Comparative  utility  not  a  cri- 
terion of  infringement. 


377.  Knowledge  of  a  patent  not  a 
necessary  element  in  its  in- 
fringement. 


CHAPTER  XVII. 

COURTS  PARTIES  AND   CAUSES  . 


.Pages  273-804 


378.  Introductory  explanation. 

379.  Jurisdiction   of   United   States 
courts  of  first  resort   in  patent 
cases. 

380.  Question  of  the  jurisdiction  of 
State    courts    in    patent    cases 
stated. 

381.  Supported   in    the    affirmative 
from  ALEXANDER  HAMILTON. 

382.  Supported  in  the  negative  from 
Justice  STORY. 

383.  Supported   in    the    affirmative 
from  Justice  WASHINGTON. 

384.  Supported  in  the  negative  from 
Chancellor  KENT. 

385.  Supported  in  the  negative  from 
Justice  FIELD. 

386.  Considered  in  the  light  of  all 
the  foregoing  opinions. 

387.  Supported  in  the  negative  by 
the  text-writer. 

388.  Jurisdiction    of     State    courts 
over  controversies  growing  out 
of  contracts  relevant  to  patents. 

389.  Jurisdiction  of  individual  Unit- 
ed States  courts  of  first  resort 
in  patent  cases. 

390.  Exceptions  to  the  rules  of  the 
last  section. 

391.  Jurisdiction    of    the  Court  of 
Claims. 

392.  Question  of  the  jurisdiction  of 
the  Court  of  Claims  over  causes 
of  action  based  on  unauthorized 
making,  using,  or  selling  by  the 
United    States    Government  of 
specimens  of  a  patented  process 
or  thing. 


393.  Question  of  the  jurisdiction  of 
United     States    Circuit    Courts 
over    actions,  brought    against 
agents    of    the    United    States 
Government,  and  based  on  unau- 
thorized making,  using,  or  sell- 
ing, by  those  agents,  on  behalf 
of    the    government,   of   speci- 
mens of  a  patented  process  or 
thing. 

394.  Who  may  be  a  plaintiff  or  com- 
plainant in  a  patent  action. 

395.  Who  may  be  plaintiff  or  com- 
plainant in  an  action  based  on 
an  assigned  accrued  right  of  ac- 
tion for  infringement. 

396.  Executors   and    administrators 
as  plaintiffs  and  complainants. 

397.  Assignees  of   executors   or  ad- 
ministrators   as  plaintiffs    and 
complainants. 

398.  Attorneys  in    fact    cannot    be 
nominal  plaintiffs  or  complain- 
ants. 

399.  Owners   in    common   as    joint 
plaintiffs  or  complainants. 

400.  Licensees   cannot  be  nominal 
plaintiffs,  nor  sole  nominal  com- 
plainants. 

401.  Who  may  be  made  a  defendant 
in  a  patent  action. 

402.  Minors,    married    women    and 
lunatics  as  defendants. 

403.  Agents,  salesmen,  and  employ- 
ees as  defendants. 

404.  Employers  as  defendants. 

405.  Persons  as  defendants  who  have 
caused  others  to  infringe. 


XVI 


CONTENTS 


406.  Joint     infringers    as    defend- 
ants. 

407.  What  facts  constitute  joint  in- 
fringement. 

408.  Partners  as  defendants. 

409.  Private  corporations  as  defend- 
ants. 

410.  Officers,   directors,  and   stock- 
holders of  corporations  as  de- 
fendants. 

411.  The  same  subject  continued. 

412.  Stockholders  of  corporations. 


413.  Officers  of  corporations. 

414.  Directors  of  corporations. 

415.  Statutory  liability   of   officers, 
directors,   and  stockholders  of 
corporations. 

416.  Consolidated  corporations  as  de- 
fendants  in   actions   based    on 
infringements     committed     by 
their  constituent  corporations. 

417.  Causes  of  action  based  on  a 
plurality  of  patents,  or  on  both 
terms  of  an  extended  patent. 


CHAPTER   XVIII. 


Pages  305-386 


418.  Actions  of  trespass  on  the  case. 

419.  The  question  of   the  propriety 
of  actions  of  assumpsit  for  in- 
fringements of  patents,  consid- 
ered in  the  light  of  precedents. 

420.  Considered  in  the  light  of  ex- 
pediency. 

421.  Forms    of   civil     actions   pre- 
scribed   by    State  codes    and 
statutes  are  not  applicable  to 
patent  cases. 

422.  Declarations  in  trespass  on  the 
case. 

423.  The  statement  of  the  right  of 
action,  in  respect    of    the    in- 
ventor. 

424.  In  respect  of  the  novelty  and 
utility  of  the  invention. 

425.  In  respect  of  the  absence  of 
public  use  or  sale  more  than 
two  years  before  application  for 
a  patent. 

426.  In    respect    of    the    patentee, 
where  he   is   another   than  the 
inventor. 

427.  In  respect  of  the  application 
for  the  patent. 

428.  In  respect  of  the  letters  patent. 

429.  In  respect  of  a  reissue. 

430.  In  respect  of  a  disclaimer. 


431.  In  respect  of  an  extension. 

432.  In    respect    of    the  plaintiff's 
title. 

433.  In  respect  of  profert. 

434.  In  respect  of  infringement. 

435.  In  respect  of   the   time   of  in- 
fringement. 

436.  In  respect  of  the  damages. 

437.  The  conclusion  of  the  decla- 
ration. 

438.  Substantial  and  not   technical 
accuracy  required  in    declara- 
tions. 

439.  Dilatory  pleas. 

440.  Twenty-seven  defences  plead- 
able  in  bar  in  patent  actions. 

441.  The  twenty-seven  defences  re- 
viewed in  respect  of  their  na- 
tures and  effects. 

442.  Special  pleading. 

443.  The  general  issue  accompanied 
by  a  statutory  notice  of  special 
matter. 

444.  Notices  of  special  matter. 

445.  Defences    based    on   facts    of 
which  courts  take  judicial  no- 
tice, need  not  be  pleaded. 

446.  The  first  and  second  defences. 

447.  The  third  defence. 

448.  The  fourth  defence. 


CONTENTS. 


XVII 


449.  The  fifth  and  sixth  defences. 

450.  The  seventh  defence. 

451.  The  eighth  defence. 

452.  The  ninth  and  tenth    defen- 
ces. 

453.  The  eleventh  defence. 

454.  The  twelfth  defence. 

455.  The  thirteenth  defence. 

456.  The  fourteenth  defence. 

457.  The  fifteenth  defence. 

458.  The  sixteenth  defence. 

459.  The  seventeenth  defence. 

460.  The  eighteenth  defence. 

461.  The  nineteenth  defence. 

462.  The  twentieth  defence. 

463.  The  twenty-first  defence. 

464.  The  twenty-second  defence. 

465.  The  twenty -third  and   twenty- 
fourth  defences. 

466.  The  twenty-fifth  defence. 

467.  The      twenty-sixth      defence : 
estoppel. 

468.  Estoppel  by  matter  of   record  : 
res  judicata. 

469.  Estoppel  by  matter  of  deed. 

470.  The  twenty-sixth  defence  ;  how 
pleaded. 

471.  The    twenty-seventh   defence  : 
statutes  of  limitation. 

472.  The  national  statute  of  limita- 
tion. 

473.  Its     operation    on    rights    of 
action    based     upon      patents 
which  expired  prior  to  July  8, 
1864  ;  and   on   rights   of  action 
based  upon  patents   which   ex- 
pired   between   that   day    and 
JulyS,  1870. 

474.  Its    operation    on     rights     of 
action     based    upon     infringe- 
ments  committed   before  July 
8,  1870,  of  patents  which  were 
in  force  on   that   day  ;  and   on 
rights  of  action  based  upon  in- 
fringements of  patents  commit- 
ted after  that  day  and  before 
June  22,  1874, 


475.  Its  operation  on  rights  of  ac- 
tion based  upon  infringements 
of   original  terms   of   extended 
patents. 

476.  State  statutes  of  limitation  do 
not  apply  to  any  right  of  action 
which    is    attended  to  by  the 
national  statute  ;  that  is,  to  any 
right  of  action  based  on  an  in- 
fringement   committed    before 
June  22,  1874. 

477.  The  question  of  the  applicabil- 
ity of  State  statutes  of  limita- 
tion to  rights  of  action  for  in- 
fringements   committed    after 
June  22,  1874. 

478.  Explications,    rejoinders,    and 
sur-rejoinders,  where  licenses  or 
releases  are  pleaded. 

479.  Eeplications,  where  the  national 
statute  of  limitation  is  plead- 
ed. 

480.  Eeplications    and    rejoinders, 
where  a  State  statute  of  limit- 
ation is  pleaded. 

481.  The  similiter. 

482.  Demurrers. 

483.  Demurrers  to  declarations. 

484.  Demurrers  to  pleas. 

485.  Demurrers  to  replications. 

486.  Joinders  in  demurrer. 

487.  Trial    of    actions   at  law    for 
infringement  of  patents. 

488.  Trial  by  jury. 

489.  Eules  of  practice. 

490.  Eules  of  evidence. 

491.  Letters  patent  as  evidence. 

492.  Eeissue  letters  patent  are  pri- 
ma  fade  evidence  of  their  own 
validity. 

493.  Extensions  of  patents  areprima 
facie  evidence  of  their  own  va- 
lidity. 

494.  Letters  patent  presumed  to  be 
in  force  till  the  end  of  the  term 
expressed  on  their  face. 

495.  Evidence  of  title. 


XV111 


CONTENTS. 


496.  Neither  licenses,   releases,  nor 
omission  to  mark  "  patented  ' 
need  be  negatived  in  a  plain- 
tiff's prima  facie  evidence. 

497.  Evidence    of    the  defendant's 
doings. 

498.  Expert   evidence  of    infringe- 
ment. 

499.  Hypothetical  questions  for  ex- 
perts. 

500.  Expert   testimony  relevant  to 
the  state  of  the  art. 

501.  Cross-examination  of  experts. 

502.  Evidence  of  damages. 

503.  Defendant's  evidence  in  chief. 

504.  Evidence  to   sustain  the  first 
defence. 

505.  To    sustain    the    second    de- 
fence. 

506.  To  sustain  the  third  defence, 
when  based  on  prior  patents 

507.  When  based  on  prior  printed 
publications. 

508.  When  based   on   prior  knowl- 
edge or  use. 

509.  Rebutting     evidence     to     the 
third   defence,  when  based   on 
prior  knowledge  or  use. 

510.  Rebutting     evidence    to    the 
third  defence,  however  based. 

511.  Evidence  to  sustain  the  fourth 
defence. 

512.  To  sustain  the  fifth  defence. 

513.  The  sixth  defence. 

514.  The  seventh  defence. 

515.  The  eighth  defence. 

516.  The  ninth  defence. 

517.  The  tenth  defence. 

518.  The  eleventh  defence. 

519.  The  twelfth  defence. 

520.  The  thirteenth  defence. 

521.  The  fourteenth  defence. 


522.  The  fifteenth  defence. 

523.  The  sixteenth  defence. 

524.  The  seventeenth  defence. 

525.  The  eighteenth  defence. 

526.  The  nineteenth  defence. 

527.  The  twentieth  defence. 

528.  The  twenty-first  defence. 

529.  The  twenty-second  defence. 

530.  The  twenty-third  defence. 

531.  The  twenty-fourth  defence. 

532.  The  twenty-fifth  defence. 

533.  The  twenty-sixth  defence. 

534.  The  twenty-seventh  defence. 

535.  How  testimony  is  taken  in  ac- 
tions at  law. 

536.  When  the  judge  may  direct  the 
jury  to  return  a  verdict  for  the 
defendant. 

537.  Instructions  to  juries. 

538.  Verdicts. 

539.  New  trials. 

540.  Trials  by  a  judge  without  a 

jury. 

541.  Trial  by  referee. 

542.  Judgments. 

543.  Costs. 

544.  Costs  under  the  statute. 

545.  Attorney's  docket  fees. 

546.  Clerk's  fees. 

547.  Magistrate's  fees. 

548.  Witness  fees. 

549.  Taxation  of  costs. 

550.  Writs  of  error. 

551.  Bills  of  exception. 

552.  Erroneous    instructions,     and 
refusals  to  instruct. 

553.  Exceptions  to  instructions,  and 
to  refusals  to  instruct. 

554.  Time  when  exceptions  must  be 
noted,  and  time  when   bills   of 
exception    must  be  drawn  up 
and  signed. 


CONTENTS. 


XIX 


CHAPTER  XIX. 


.Pages  387-398 


555.  The  generic  measure  of  dam- 
ages. 

556.  Established  royalties  as  specific 
measures  of  damages. 

557.  Tests  applied  to  royalties,  on 
behalf  of  defendants. 

558.  Tests  applied  to  royalties  on 
behalf  of  plaintiffs. 

559.  Money  paid  for  infringement 
already  committed,  is  no  meas- 
ure   of     damages    in    another 
case. 

560.  Royalties  reserved  on  sales  of 
patents. 

561.  Royalties  for  licenses  to  make 
and  use,    and  royalties  for  li- 
censes to  make  and  sell. 


562.  Proportion  of  licensed  to  un- 
licensed practice  of  an  invention. 

563.  Measure  of  damages  in  the  ab- 
sence of  an  established  royalty. 

564.  Damages  for  unlicensed  making, 
without   unlicensed   selling   or 
using. 

565.  Evidence  of  damages. 

566.  Indirect    consequential     dam- 
ages. 

567.  Exemplary  damages. 

568.  Increased  damages. 

569.  Actual  damages  not  affected  by 
infringement  being  unintended. 

570.  Counsel  fees  and  other  expen- 
ses, 

571.  Interest  on  damages. 


CHAPTER  XX. 

ACTIONS  IN  EQUITY Pages  399-449 


572.  Jurisdiction  of  equity  in  patent 
causes. 

573.  Jurisdiction   of   equity   to   as- 
sess and  decree  damages. 

574.  The  complainant. 

575.  The  defendant. 

576.  Original  bills. 

577.  The  title  of  the  court. 

578.  The  introductory  part. 

579.  The  stating  part. 

580.  The  prayer  for  relief. 

581.  The  interrogating  part. 

582.  The  prayer  for  process. 

583.  The  signature. 

584.  The  oath. 

585.  Bills  to  perpetuate  testimony. 

586.  Amendments  to  bills,  when  al- 
lowed. 

587.  Amendments    to    bills,    when 
necessary. 

588.  Demurrers,  pleas,  and  answers. 


589.  Pleas  in  equity. 

590.  Arguments    upon    pleas,    and 
replications  to  pleas. 

591.  Defences  in  equity  cases. 

592.  Non- jurisdiction  of  equity. 

593.  The  same  subject  continued. 

594.  Non-jurisdiction  in  equity,  how 
set  up  as  a  defence. 

595.  Prior    adjudication   at    law  is 
not  necessary  to  jurisdiction  in 
equity. 

596.  Laches. 

597.  Laches,  how  set  up. 

598.  The  first  of  the  twenty-seven 
defences. 

599.  The  second  defence. 

600.  The  third  defence. 

601.  The  fourth  defence. 

602.  The  fifth  and  sixth  defences. 

603.  The  seventh  defence. 

604.  The  eighth  defence. 


XX 


CONTENTS. 


605.  The  ninth  and  tenth  defences. 

606.  The  eleventh  defence. 

607.  The  twelfth  defence. 

608.  The  thirteenth  defence. 

609.  The  fourteenth  defence, 

610.  The  fifteenth  defence. 

611.  The  sixteenth  defence. 

612.  The  seventeenth  defence. 

613.  The  eighteenth  defence. 

614.  The  nineteenth  defence. 

615.  The  twentieth  defence, 

616.  The  twenty-first  defence. 

617.  The  twenty-second  defence. 

618.  The  twenty-third  defence. 

619.  The  twenty-fourth  defence. 

620.  The  twenty-fifth  defence. 

621.  The  twenty-sixth  defence. 

622.  The  twenty-seventh  defence. 

623.  Replications. 

624.  Subordinate    bills    in    aid    of 
original  bills. 

625.  Supplemental  bills. 

626.  Bills  in  the  nature  of  supple- 
mental bills. 

627.  Bills  of  revivor. 

628.  Bills  in  the  nature  of  bills  of 
revivor. 

629.  Bills   of    revivor  and    supple- 
ment. 

630.  Leave  of  court  to  file  supple- 
mental bills,  and  bills   in   the 
nature  of  supplemental  bills. 

631.  Demurrers,  pleas,  and  answers 
to  supplemental   bills    and    to 
bills  in  the  nature  of  supple- 
mental bills. 

632.  Hearings. 

633.  Interlocutory  hearings. 


634.  Questions  of    law    arising   on 
hearings. 

635.  Questions  of    fact  arising    on 
hearings. 

636.  Evidence  in  support  of  the  bill. 

637.  Evidence    in    support    of    de- 
fences. 

638.  Testimony. 

639.  Depositions. 

640.  Depositions    taken    in    other 
.  cases. 

641.  Documentary  evidence. 

642.  Trial  by  jury  in  equity  cases. 

643.  Hearings  by  masters  in  chan- 
cery. 

644.  Interlocutory  decrees. 

645.  Petitions  for  rehearings. 

646.  Rehearings  for  matter  apparent 
on  the  record. 

647.  Rehearings  on  account  of  newly 
discovered  evidence. 

648.  Supplemental  bills  in  the  na- 
ture of  bills  of  review. 

649.  Final  decrees. 

650.  Bills  of  review. 

651.  Bills  of  review  to  correct  errors 
apparent  on  the  pleadings  or 
final  decree. 

652.  Bills  of    review  to    introduce 
evidence    discovered   after   the 
entry  of  the  final  decree. 

653.  Bills  in  the  nature  of  bills  of 
review. 

654.  Appeals. 

655.  Hearings  on  appeals. 

656.  Decisions  on  appeals. 

657.  Certificates  of  division  of  opin- 


INJUNCTIONS Pages  450-483 


658.  Jurisdiction  to    grant  injunc- 
tions. 

659.  Preliminary  injunctions  [tions. 

660.  Bills  for  preliminary    injunc- 


661.  Notices  of  motions  for  prelimi- 
nary injunctions. 

662.  Motions    for    preliminary    in- 
junctions. 


CONTENTS. 


XXI 


663.  Suspensions    of    motions    for 
preliminary  injunctions. 

664.  Temporary  restraining  orders. 

665.  Elements  of  prima  facie  rights 
to  preliminary  injunctions. 

666.  Prior  adjudication. 

667.  Public  acquiescence. 

668.  Duration  of  public  acquiescence 
in  a  strict  monopoly. 

669.  Durationof  public  acquiescence 
in  a  licensed  monopoly. 

670.  Public  acquiescence  need  not 
be  universal  to  be  efficacious. 

671.  Decrees  pro  confesso. 

672.  Consent  decrees. 

673.  Defendent's   admission   of  va- 
lidity. 

674.  Interference  decisions. 

675.  The  complainant's  title. 

676.  Infringement. 

677.  Defences  to  motions  for  pre- 
liminary injunctions  ;  and  first 
by  way  of  traverse. 

678.  Defences  by  way  of  confession 
and  avoidance. 

679.  Averting  effect  of  prior  adjudi- 
cation. 

680.  Averting  effect  of  public    ac- 
quiescence. 

681.  Averting    preliminary    injunc- 
tion by  proving   repeal  or  ex- 
piration of   patent,   or  fault  in 
title  thereto. 

682.  Averting    preliminary    injunc- 
tion by  proving  license. 

683.  By  proving  estoppel. 

684.  By  showing  laches. 

685.  Preliminary    injunction    must 
generally  follow  a  cause  and  an 
application  therefor. 

686.  Bonds  instead  of.  injunctions, 
where    complainant    grants   li- 
censes. 

687.  Where     infringing   machinery 
embodies   non-infringing    feat- 
ures ;   also   where  it   was   con- 
structed under  a  junior  patent. 


688.  Bonds  required  from  complain- 
ants in  certain  cases. 

689.  Injunctions  not  averted  by  the 
existence  of  a  remedy  at  law. 

690.  Injunctions   pro     confesso     on 
withdrawal   of   opposition  to  a 
motion  for  an  injunction. 

691.  Discretion    of     the    court    in 
granting    or    refusing    injunc- 
tions. 

692.  Motions  to  dissolve  preliminary 
injunctions. 

693.  Motions  to  dissolve  for  errors 
in  point  of  law. 

694.  Motions  to  dissolve  on  account 
of  newly  discovered  evidence. 

695.  Reinstatement  of  dissolved  in- 
junctions. 

696.  Consequences  of  obedience  or 
disobedience     to      injunctions 
which    are    subsequently    dis- 
solved. 

697.  Permanent  injunctions. 

698.  Refusal  of  permanent  injunc- 
tion, because  the  patent  has  ex- 
pired. 

699.  Because   the  complainant   has 
assigned  the  patent. 

700.  Because  the  defendant  is  dead, 
or.    if    a    corporation,    is   dis- 
solved. 

701.  Cessation   of  infringement  no 
ground  for  refusal  to  enjoin. 

702.  Postponement    of    permanent 
injunctions. 

703.  Suspension  of    permanent  in- 
junctions. 

704.  Dissolution   of  permanent  in- 
junctions. 

705.  Injunctions  granted  independ- 
ent of  other  relief ;  but  no  in- 
junctions issued  in  trivial  cases, 
nor    to   restrain    complainants 
from  suing  third  parties. 

706.  The   duration    of    injunctions 
generally  limited  by  the  term  of 
the  patent. 


CONTEXTS. 


707.  The  duration    of    injunctions 
granted    by   district  judges  in 
vacation. 

708.  Attachments  for  contempts. 


709.  Improper  defences  to  motions 
for  attachments. 

710.  Penalties  for  violations  of  in- 
junctions. 


CHAPTER  XXII. 
PROFITS Pages  484-513 


711.  The  infringer's  profits  recover- 
able in  equity. 

712.  In  cases  of  joint  infringement. 

713.  In  cases  of  infringement  partly 
unprofitable. 

714.  What  spaces  of  time  an  account 
of  profits  may  cover. 

715.  The  generic  rule  for  ascertain- 
ing infringer's  profits. 

716.  Complainant's  damages  no  cri- 
terion of  defendant's  profits. 

717.  Defendant's  profits  in  cases  of 
unlawfully  making  and  selling 
articles    covered    by   the   com- 
plainant' s  patent. 

718.  Method  of  ascertaining  cost  of 
making  and  selling   infringing 
articles. 

719.  Burden   of    proof    when   it  is 
necessary    to    separate    profits 
due  to  patented  features,  from 
profits  due  to  other  features,  of 
an  infringing  article. 

720.  Method  of  making  the  separa- 
tion where  defendant  made  and 
sold    the    patented     invention 
separately,  as  well  as  in  connec- 
tion with  other  things. 

721.  Method  where  defendant  pays 
royalty  for  right   to  make  and 
sell  the  features  not  covered  by 
the  patent  in  suit. 

722.  Cases  where  no  separation  is 
required  or  allowed. 

723.  Method  of  making  the  separa- 
tion by  the  criterion  of  com- 
parative cost. 


724.  Defendant's  profits  in  cases  of 
unlawfully  selling  articles  partly 
or  wholly  covered  by  complain- 
ant's patent. 

725.  Defendant's  profits  in  cases  of 
unlawful     using     of     patented 
processes  or  things,  ascertained 
by  the  rule  in  Mowry  v.  Whit- 
ney. 

726.  Standards    of     comparison  in 
respect  of  being   open   to   the 
public. 

727.  In  respect  of  being  adequate  to 
accomplish  an  equally  beneficial 
result. 

728.  Recoverable  profits  may  result 
from  affirmative  gains,  or  from 
saving  from  loss. 

729.  Affirmative  gain. 

730.  Saving  from  loss. 

731.  Affirmative    gain    and    saving 
from  loss. 

732.  Standards  of  comparison  need 
not  have  been  used  by  the  in- 
fringer. 

733.  A  standard  of  comparison  must 
have  been  known  at  the  time  of 
the  infringement,  but  need  not 
have  been  in  existence  at  any 
earlier  period. 

734.  Method  of  selecting  the  proper 
standard  of  comparison. 

735.  The  rule  in  Mowry  v.  Whitney 
has  no  application  to  cases  of 
infringement  by  making  or  by 
selling. 


CONTENTS. 


XX111 


736.  Questions  of    interest    on  in- 
fringers'  profits,    considered  in 
the  light  of  the  Supreme  Court 
precedents. 

737.  Considered  in  the  light  of  Cir- 
cuit Court  precedents. 

738.  Considered    in    the    light     of 
equitable   doctrines   and    prin- 
ciples. 

739.  Proceedings  before  masters. 

740.  Evidence  before  masters. 

741.  Objections  to   evidence  before 
masters. 

742.  Questions  of  the  extent  of  the 
defendant's  infringement. 


743.  Questions  relevant  to  different 
sorts  of  defendant's  alleged  in- 
fringement. 

744.  Master's  reports. 

745.  Exceptions  to  master' s  report. 

746.  Defendant's       exceptions      to 
master' s  reports. 

747.  Defendant's  affirmative  excep- 
tions to  master's  reports. 

748.  Defendant's    negative     excep- 
tions to  master's  reports. 

749.  Complainant's    exceptions    to 
master's  reports. 

750.  Outline  of  practice  relevant  to 
master's  findings. 


APPENDIX. 


THE  PATENT  STATUTES. 

THE   REPEALED   STATUTES Pages  517-597 


Patent  Act  of  1790  

PAGE 
..  517 

Patent  Act  of  1849  

PAGE 
.  561 

"     1793..  

..  521 

1852 

561 

"     1794  

..  526 

"     Feb.  18,  1861.. 

.  562 

1800  

..  527 

March  2,  1861.. 

.  563 

1819  

..  528 

1862  

.  570 

July  3,  1832. 

..  529 

1863  

.  570 

July  13,  1832 

..  531 

1864  

.  571 

1836  

..  532 

1865  

.  572 

1837  

.  546 

1866  . 

572 

1839  

.  553 

1870  

.  573 

1842  

..  557 

"     March  3,  1871 

.  597 

1848.. 

.  559 

"     March  24.  1871 

.  597 

THE   REVISED   STATUTES ,  .Pages  598-624 


PECTION 

440.  Clerks  and  employes. 

441.  Secretary  of  the  Interior. 

475.  Establishment   of    the    Patent 
Office. 


SECTION 

476.  Officers  and  employes. 

477.  Salaries. 

478.  Seal.  [chief  clerk. 

479.  Bonds    of    Commissioner  and 


XXIV 


CONTENTS. 


480.  Restrictions  upon  officers  and 
employes. 

481.  Duties  of  Commissioner. 

482.  Duties  of  examiners-in-chief. 

483.  Establishment  of  regulations. 

484.  Arrangement  and  exhibition  of 
models,  &c. 

485.  Disposals  of  models  on  rejected 
applications. 

486.  Library. 

487.  Patent-agents  may  be  refused 
recognition. 

488.  Printing  of  papers  filed. 

489.  Printing  copies  of  claims,  laws, 
decisions,  &c. 

490.  Printing     specifications      and 
drawings. 

491.  Additional   specifications    and 
drawings. 

492.  Lithographing  and  engraving. 

493.  Price  of  copies  of  specifications 
and  drawings. 

494.  Annual  report  of  the  Commis- 
sioner. 

496.  Disbursements  for  Patent-Of- 
fice. 

629.  Jurisdiction  of  Circuit  Courts. 

699.  Writs  of  error  and  appeals, 
without  reference  to  amount. 

892.  Copies  of  records,  &c.,  of  Patent- 
Office. 

893.  Copies     of      foreign     letters- 
patent. 

894.  Printed  copies  of  specifications 
and  drawings  of  patents. 

973.  Costs  where  disclaimers  are 
necessary. 

4883.  Patents,  how  issued,  attested, 
and  recorded. 

4884.  Their  contents  and  duration. 

4885.  Date  of  patent. 

4886.  What  inventions  are  patenta- 
ble. 

4887.  Patents  for  inventions  previ- 
ously patented  abroad. 

4888.  Requisites  of  specification  and 
claim. 


SECTION 

4889.  Drawings,  when  requisite. 

4890.  Specimens  of  ingredients,  &o. 

4891.  Model,  when  requisite. 

4892.  Oath  required  from  applicant. 

4893.  Examination  and  issuing  pat- 
ent. 

4894.  Limitation  upon  time  of  com- 
pleting application. 

4895.  Patents  granted  to  assignee. 

4896.  When,  and  on  what  oath,  exec- 
utor  or   administrator  may  ob- 
tain patent. 

4897.  Renewal     of     application    in 
cases  of  failure   to  pay  fees  in 
season. 

4898.  Assignment  of  patents. 

4899.  Persons  purchasing  of  invent- 
or before  application  may  use  or 
sell  the  thing  purchased. 

4900.  Patented     articles     must    be 
marked  as  such. 

4901.  Penalty  for  falsely  marking  or 
labelling  articles  as  patented. 

4902.  Filing  and  effect  of  caveats. 

4903.  Notice   of    rejection  of   claim 
for    patent  to  be  given  to  ap- 
plicant. 

4904.  Interferences. 

4905.  Affidavits  and  depositions. 

4906.  Subpoenas  to  witnesses. 

4907.  Witness  fees. 

4908.  Penalty  for  failing  to  attend  or 
refusing  to  testify. 

4909.  Appeals  from  primary  exam- 
iners to  examiners-in-chicf . 

4910.  From     examiners-in-chief     to 
Commissioner. 

4911.  From  the  Commissioner  to  the 
supreme  court,  D.  C. 

4912.  Notice  of  such  appeal. 

4913.  Proceedings  on  appeal  to  su- 
preme court,  D.  C. 

4914.  Determination  of  such  appeal 
and  its  effect. 

4915.  Patents  obtainable  by  bill  in 
equity. 

4916.  Re-issue  of  defective  patents. 


CONTENTS. 


XXV 


SECTION 

4917.  Disclaimer. 

4918.  Suits  touching  interfering  pat- 
ents. 

4919.  Suits  for  infringement ;  dam- 
ages. 

4920.  Pleading  and  proof  in  actions 
for  infringement. 

4921.  Power  of  courts  to  grant  in- 
junctions   and    estimate    dam- 


4922.  Suit  for  infringement  where 
specification  is  too  broad. 

4923.  Patent  not  void  on  account  of 
previous  use   in  foreign   coun- 
try. 

4924.  Extension  of  patents  granted 
prior  to  March  2,  1861. 

4925.  What  notice  of  application  for 
extension -must  be  given. 


SECTION 

4926.  Applications  for  extension  to 
whom  to  be  referred. 

4927.  Commissioner  to  hear  and  de- 
cide    the     question    of     exten- 
sion. 

4928.  Operation  of  extension. 

4929.  Patent     for    designs    author- 
ized. 

4930.  Models  of  designs. 

4931.  Duration  of   patents  for  de- 
signs. 

4932.  Extension  of  patents  for  de- 
signs. 

4933.  Patents  for  designs  subject  to 
general  rules  of  patent-law. 

4934.  Fees    in    obtaining     patents, 
<fec. 

4935.  Mode  of  payment. 

4936.  Refunding. 


PATENT  ACT  OF  1875 Page  624 

FORMS  OF  PATENT  PLEADINGS. 

DECLARATION Page  626 

PLEA  IN   BAR "  629 

REPLICATION "  632 

REJOINDER '. "  633 

SUR-REJOINDER "  634 

BILL   OF   COMPLAINT "  634 

PLEA   IN  EQUITY "  639 

ANSWER «  641 

REPLICATION   IN  EQUITY «  045 


EQUITY    EULES Pages  646-677 


TABLE   OF  CITED   CASES. 


Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Abbett  v.  Zusi 5  Bann.  &  Ard 207 

Adams  v.  Brown 7  Gushing  (Mass.) 513 

Adams  v.  Burke 17  Wallace 208,  217,  219 

Adams  v.  Jones 1  Fisher 60,  77 

Adams  v.  Loft 4  Bann.  &  Ard 29 

Adams  v.  Mfg.  Co 3  Bann.  &  Ard 252 

Agawam  Co.  v.  Jordan 7  Wallace 33,  60,  182,  184,  185, 

190,  197,  327,  328, 
329,  335,  362,  417 

Ager  v.  Murray 105  U.  S 107,  209,  210 

Aiken  v.  Bemis '. 3  Woodbury  &  Minot 253,  374,  375 

Aiken  v.  Dolan 3  Fisher 30,  145 

Aiken  v.  Print  Works 2  Cliff 193 

Albright  v.  Teas 106  U.  S 281 

Alden  v.  Dewey 1  Story 374 

Allen  v.  Blunt 2  Woodbury  &  Minot  374 

Allis  v.  Buckstaff 13  Fed.  Kep 418 

Allis  v.  Stowell 5  Bann.  &  Ard 441 

Allis  u.  Stowell 16  Fed.  Kep 478 

Allis  u.  Stowell 19  Off.  Gaz 481 

Allred  v.  Bray 41  Missouri 294 

Alteneck's  Appeal 23  Off.  Gaz 85 

American  Ballast  Log  Co.  v.  Cotter . .  11  Fed.  Rep 434 

American  Bell  Telephone  Co.  v. 

Dolbear 15  Fed.  Rep 265 

American  Bell  Telephone  Co.  v. 

Spencer 8  Fed.  Rep 143,  265 

American  Cotton-Tie  Supply  Co.  v. 

McCready 17  Blatch 478 

American  Cotton-TieCo. v.  Simmons . .  106  U.  S 219,  412 

American  Diamond  Rock  Boring 

Co.  v.  Marble  Co 2  Fed.  Rep 476 

American  Diamond  Rock  Boring 

Co.  v.  Sheldon 18  Blatch 440,  476 

American  Diamond  Rock  Boring 

Co.  v.  Sullivan  Machine  Co.  .    .  .14  Blatch.  . .  267 


XXV111  TABLE   OF    CITED   CASES. 

Names  of  Cases.  Where  reported.  Pagea  in  this  book. 

American  Hide  and  Leather  Split- 
ting Machine  Co.  v.  Machine  Co. .  4  Fisher 61,  66,  83,  100 

American  Insurance  Co.  v.  Canter ...  1  Peters 447 

American  Middlings  Purifier  Co.  v. 

Atlantic  Milling  Co 3  Bann.  &  Ard 468 

American  Middlings  Purifier  Co.  v.  [468,  477 

Christian 3  Bann.  &  Ard 433,  434,  456,  467, 

American  Middlings  Purifier  Co.  v. 

Vail 15  Blatch 472 

American  Nicholson  Pavement  Co. 

v.  Elizabeth    4  Fisher 465,  470 

American  Nicholson  Pavement  Co. 

v.  Elizabeth 1  Bann.  &  Ard 489 

American  Saddle  Co.  v.  Hogg 6  Fisher 442 

American    Shoe-Tip    Co.    v.    Pro- 
tector Co 2  Bann.  &  Ard 156 

Ames  v.  Howard , 1  Sumner 127,  374,  375 

Andrews  u.  Carman 13  Blatch 46,  61 

Andrews  v.  Creegan 7  Fed.  Eep 435 

Andrews  v.  Hovey 16  Fed.  Eep 62,  248 

Andrews  v.  Long  12  Fed.  Rep 248 

Andrews  v.  Spear 3  Bann.  &  Ard 468 

Anilin  v.  Higgin 15  Blatch 155 

Anson  v.  Woodbury 12  OS.  Gaz 92 

Anthony  v.  Carroll   2  Bann.  &  Ard , 341 

Arthur  v.  Griswold 55  New  York 301 

Asbestos  Felting  Co.  v.  Salamander 

Felting  Co 13  Blatch 231,  478 

Ashcroft  v.  Walworth 1  Holmes 202,  203,  210 

Atlantic  Giant  Powder  Co.  v.  Ditt- 

mar  Powder  Mfg.  Co 9  Fed.  Eep 481 

Atlantic  Giant  Powder  Co.  v.  Good- 
year  3  Bann.  &  Ard 269,  456,  465 

Atlantic  Giant  Powder  Co.  v.  Mow- 
bray 2Bann.&Ard 269 

Atlantic  Works  v.  Brady 107  U.  S 18,  19 

Attorney-General  v.  Rumford  Chem- 
ical Works 2  Bann.  &  Ard 234 

Atwood  v.  Portland  Co 10  Fed.  Eep 170,  175,  176,  311 

Aultman  v.  Holley 11  Blatch 170 

Babcock  v.  .Tudd. 5  Bann.  &  Ard 260 

Badische  Anilin  and  Soda  Fabrik  v. 

Cummins 4  Bann.  &  Ard. 50 

Badische  Anilin  and  Soda  Fabrik  v. 

Hamilton  Mfg.  Co 3  Bann.  &  Ard 118 

Bailey  v.  Bussing 28  Connecticut 367 

Bailey  Wringing  Machine  Co.  v. 

Adams..  .  ,..3  Bann.  &  Ard 465 


TABLE   OF   CITED   CASES.  XXIX 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Baker  u.  Stowe 15  Blatch 418 

Baker  v  Whiting 1  Story 442 

Baldwin  v.  Bernard 5  Fisher 469 

Baldwin  v.  Sibley 1  Clifford 224 

Ball  v.  Langles 102  U.  S 157,  175 

Ballard  v.  Pittsburg 12  Fed.  Eep 60,  477 

Baltimore  &  Potomac  Railroad  Co.  v. 

Fifth  Baptist  Church 108  U.  S 297 

Bancroft  v.  Acton 7  Blatch 401 

Bank  of  Augusta  v.  Earle 13  Peters 283 

Bank  of  Orleans  v.  Skinner 9  Paige  (N.  Y.) 405 

Bank  of  United  States  u.  Daniel 12  Peters 427 

Bantz  u.  Elsas  1  Bann.  &  Ard 170,  174 

Bantz  v.  Frantz 105  U.  S 164 

Barker  v.  Stowe 4  Bann.  &  Ard 440,  441 

Barnard  v.  Gibson 7  Howard 439,  477 

Barney  v.  Peck 16  Fed.  Eep 303 

Barrett  v.  Hall 1  Mason 35,  353 

Barron  v.  Baltimore 7  Peters 102,  108 

Bartholomew  v.  Sawyer 1  Fisher. .    46 

Bartlett  v.  Holbrook 1  Gray  (Mass.) 221 

Bate  Refrigerating  Co.  v.  Eastman. .  .11  Fed.  Rep 481 

Bate  Refrigerating  Co.  v.  Gillett 13  Fed.  Rep 113 

Bates  v.  Coe 98  U.  S 45,  303,  417 

Bathu.  Caton 37  Michigan 300 

Battin  v.  Taggert. .  17  Howard 50,  59,  68,  70, 

129,  155,  164,  176 

Beane  v.  Orr 2  Bann.  &  Ard 466 

Bean  v.  Smallwood 2  Story 29 

Bedell  v.  Janney 4  Gilman  (111.) 343 

Bedford  v.  Hunt 1  Mason 48,  54 

Belding  y.  Turner 8  Blatch 224 

Bell  v.  Daniels 1  Fisher 53,  70,  93 

Bell  u.  Hearne 19  Howard 122 

Bellas  v.  Hays 5  Sergeant  &  Rawle  (Penn.) 358 

Bennet  v.  Fowler 8  Wallace 369 

Berry  u.  Stockwell 9  Off .  Gaz 92 

Bevin  v.  Bell  Co 9  Blatch 95 

Bicknell  v.  Todd 5  McLean 218 

Bierce  v.  Stocking 1 11  Gray  (Mass.) .  353 

Bigelow  v.  Louisville 3  Fisher 221 

Bignall  v.  Harvey ". 18  Blatch 50,  311,  476 

Birdsall  v.  Coolidge 93  U.  S 811,  392,  397 

Birdsall  v.  Mfg.  Co 1  Hughes    478 

Birdsall  v.  Mfg.  Co  2  Bann.  &  Ard 481 

Birdsall  v.  McDonald 1  Bann.  &  Ard 60,  71 

Birdsall  v.  Perego 5  Blatch 221 


XXX  TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Bischoff  v.  Wethered 9  Wallace 50,  362,  366 

Black  v.  Hubbard 3  Bann.  &  Ard 193 

Black  v.  Munson 14  Blatch 390,  391,  490 

Black  v.  Stone 33  Alabama 202 

Black  v.  Thorn 10  Blatch 286 

Blagrove  v.  Ringgold 2  Cranch's  Circuit  Court  Reports. .  382 

Blake  v.  Robertson 94  U.  S 255,  491 

Blanchard  v.  Beers 2  Blatch 271 

Blanchard  v.  Eldridge 1  Wallace 291 

Blanchard  v.  Putnam 8  Wallace 335,  348,  370,  383 

Blanchard  v.  Reeves 1  Fisher 249,  463 

Blanchard  v.  Sprague 1  Cliff 226 

Blanchard' s  Gun  -  Stock  Turning 

Factory  v.  Warner 1  Blatch 185 

Blandy  v.  Griffith 3  Fisher 32,  95,  419 

Blandy  v.  Griffith 6  Fisher 441,  442 

Bliss  v.  Brooklyn 8  Blatch 182,  292 

Bliss  v.  Brooklyn .10  Blatch 52 

Bliss  v.  Haight 3  Fisher 254 

Bloomer  v.  Gilpin 4  Fisher  225 

Bloomer  v.  McQuewan 14  Howard,  106,  133,  184,  185,  193,  219 

Bloomer  v.  Millinger 1  Wallace 193 

Bloomer  v.  Stolley 5  McLean 184 

Board  of  Commissioners  v.  Gorman.  .19  Wallace 446 

Boomer  v.  Power  Press  Co 13  Blatch 476 

Booth  v.  Seevers 19  Off.  Gaz 227 

Boston  Iron  Co.  u.  King 2  Gushing  (Mass.) 513 

Bourne  v .  Goodyear 9  Wallace 234 

Bowker  v.  Dows 3  Bann.  &  Ard 296 

Boyd  v.  McAlpin 3  McLean. 202,  463 

Boyden  v.  Burke 14  Howard 134 

Bradford  v.  Bradford 5  Connecticut 336 

Bradley  &  Hubbard  Mfg.  Co.  v.  The 

Charles  Parker  Co 17  Fed.  Rep 466 

Brainard  v.  Cramme 12  Fed.  Rep 6,  145,  177 

Brammer  v.  Jones 3  Fisher  .  , 470 

Bray  v.  Hartshorn 1  Cliff 374 

Brickill  v.  New  York 5  Bann.  &  Ard 110 

Bridgeport  Wood  Finishing  Co.  v. 

Hooper 5  Fed.  Rep 45 

Brig  Struggle  v.  United  States 9  Cranch 237 

Broadnax  v.  Transit  Co 5  Bann.  &  Ard 174 

Bronson  v.  Kinzie 1  Howard. .   102 

Brooks  v.  Ashburn 9  Georgia 295 

Brooks  v.  Bicknell 3  McLean 191,  351,  470 

Brooks  «.  Byam 2  Story 202,  220,  225 

Brooks  v.  Fiske. .  .  .15  Howard  . .  .  .126,  252,  258 


TABLE   OF   CITED   CASES.  XXXI 

Names  of  Cases.  "Where  reported.  Pages  in  this  book. 

Brooks  v.  Jenkins 3  McLean 142,  143,  191,  210,  352, 

358,  368 

Brooks  v.  Norcross 2  Fisher 37 

Brown  v.  Duchesne 19  Howard 100,  101,  111 

Brown  v.  Jackson 3  Wheaton 203 

Brown  v.  Hall 6  Blatch 418 

Brown  v.  Piper 91  U.  S 29,  326,  356,  417,  448 

Brown  v.  Rickets 4  Johnson's  Chancery  (N.  Y.) 504 

Brown  v.  Shannon 20  Howard 281 

Brummer's  Appeal 1  Off.  Gaz 86 

Buerk  v.  Imhaeuser 2  Bann.  &  Ard 441,  442,  481 

Bull  v.  Pratt 1  Connecticut 224 

Bullock  Printing-Press  Co.  v.  Jones.  .3  Bann.  &  Ard 477 

Burdell  v.  Comstock 15  Fed.  Rep 413 

Burdell  v.  Denig 92  U.  S. 221,  311,  355,  367 

Burden  v.  Corning 2  Fisher 142,  420 

Burdett  v.  Estey 3  Fed.  Rep 120,  142,  487,  501,  504 

Burdett  v.  Estey .15  Blatch 145 

Burney  v.  Goodyear 11  Cushing  (Mass.) 179 

Burns  v.  Meyer 100  U.  S 132 

Burr  v.  Duryee 1  Wallace  . .  156,  160,  250,  255,  257,  263 

Burr  v.  Duryee 2  Fisher 222,  223 

Burrall  v.  Jewett 2  Paige  (N.  Y.) 52 

Buss  v.  Putney 38  N.  H 220 

Bussard  v.  Catalino ...  2  Cranch's  Circuit  Court  Reports . .  380 

Buzzell  v.  Fifield 7  Fed.  Rep 21 

Byam  v.  Eddy 2  Blatch 268 

Byam  v.  Farr 1  Curtiss 270 

Cahill  v.  Brown 3  Bann.  &  Ard 39 

Cahoon  v.  Ring 1  Cliff 41,  256,  353 

Caldwell  v.  Jackson 7  Cranch 379 

Caldwell  v.  Waters 4  Cranch's  Circuit  Court  Reports.  473 

Calkins  v.  Bertraud 2  Bann.  &  Ard 170 

Cammack  v.  Johnson 2  New  Jersey  Equity 472 

Cammeyer  v.  Newton 94  U.  S 101,  107 

Campbell  v.  Day 16  Vermont 202 

Campbell  v.  New  York 9  Fed.  Rep 61,  66 

Campbell  v.  Ward 12  Fed.  Rep 413 

Cansler  v.  Eaton 2  Jones'  Equity  Cases  (N.  C.) 204 

Canter  v.  Insurance  Companies 3  Peters    381 

Carew  v.  Fabric  Co 1  Holmes 1 7!) 

Carlton  v.  Bokee 17  Wallace 127,  130,  331 

Camrick  v.  McKesson 8  Fed.  Rep 417,  418,  419 

Carr  v.  Rice 1  Fisher 125,  182,  251 

Carroll  u.  Morse.   .  ..9  Off.  Gaz...  .   181 


XXX11  TABLE    OF    CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Carsteadt  v.  Corset  Co 13  Blatch 482 

Carter  v.  Baker 1  Sawyer 271,  353,  394,  395 

Carver  v.  Hyde 16  Peters 125,  258 

Carver  v.  Mfg.  Co 2  Story 76,  302 

Case  v.  Brown 2  Wallace 252,  264 

Case  v.  Morey 1  New  Hampshire 198 

Case  v.  Redfield 4  McLean 202 

Catlin  v.  Insurance  Co 1  Sumner 318 

Cawood  Patent 94  U.  S 39,  247,  439,  496,  509 

Celluloid    Mfg.    Co.    v.    Vulcanite 

Co 13  Blatch  407 

Chaffee  v.  Belting  Co 22  Howard 193,  219 

Chambers  v.  Smith 5  Fisher 219,  220,  225 

Chase  v.  Walker 3  Fisher 201 

Cheever  v.  Wilson 9  Wallace. 370 

Chicago  Fruit  House  Co.  v.  Busch. .  .2  Bissell     271 

Child  v.  Adams 1  Fisher 80 

Christman  v.  Rumsey 17  Blatch 145 

City  of  Concord  v.  Norton 16  Fed.  Rep 335 

Clodf elter  v.  Cox 1  Sneed  (Tenn.) 202 

Clough  v.  Mfg.  Co 106  U.  S 46,  260 

Clum  v.  Brewer 2  Curtiss 191,  214,  457,  463,  464 

Coburn  v.  Clark 15  Fed.  Rep 463 

Cochrane  v.  Deener 94  U.  S .  .46,  244,  251,  255,  275,  415, 449 

Goes  v.  Collins  Co 9  Fed.  Rep 130 

Coffin  v.  Ogden 18  Wallace -. . .  .48,  50 

Cohn  v.  Rubber  Co 3  Bann.  &  Ard 223 

Coleman  v.  Grubb 23  Penn  St 200 

Colgate  v.  Gold  &  Stock  Telegraph 

Co 4  Bann.  &  Ard 468,  469 

Colgate  v.  Ocean  Telegraph  Co 17  Blatch Ill 

Collar  Co.  v.  Van  Dusen 23  Wallace 157 

Collignon  v.  Hayes 8  Fed.  Rep 467 

Collins  v.  Hathaway Olcott'  s  Reports 382 

Collins  v.  Peebles 2  Fisher 341 

Colt  v.  Arms  Co 1  Fisher : 245 

Colt  v.  Young 2  Blatch 191,  468 

Combined  Patents  Can  Co.  v.  Lloyd.  .11  Fed.  Rep 25,  164 

Commissioners  of  Hamilton  Co.  v. 

Mighels 7  Ohio  State 293 

Commissioner  of  Patents  v.  White- 
ley 4  Wallace 86,  180 

Comstock  v.  Sandusky  Seat  Co 3  Bann.  &  Ard 65,  71 

Cone  v.  Morgan  Envelope  Co 4  Bann.  &  Ard 28 

Conover  v.  Mers 3  Fisher 456,  468 

Conover  v.  Mers 11  Blatch 497 

Conover  v.  Rapp 4  Fisher 260,  353 


TABLE    OF    CITED    CASES.  XXXlll 

Xames  of  Cases.  Where  reported.  Paecs  la  this  book. 

Conover  v.  Roach .  .4  Fisher  53,  254,  260,  353 

Consolidated  Fruit  Jar  Co.  v.  Whit- 
ney  1  Bann.  &  Ard 225,  470 

Consolidated  Fruit  Jar  Co.  v.  Whit- 
ney   2  Bann.  &  Ard 206,  220,  336 

Consolidated     Fruit     Jar     Co.    v. 

Wright... 94  IT.  S 58,  59,  62,  63,  101 

Consolidated    Middlings     Purifier 

Co.  v.  Guilder 9  Fed.  Rep 336 

Consolidated  Oil  Well  Packer  Co. 

v.  Eaton 12  Fed.  Eep 289 

Continental  Windmill  Co.  v.  Em- 
pire Windmill  Co 8  Blatch 202,  203,  206,  221 

Cook  v.  Bidwell 8  Fed.  Rep 206 

Cooper  v.  Mattheys 3  Penn.  Law  Journal  Reports  454,  464 

Corning  v.  Burden 15  Howard  4,  125,  134,  369 

Corning  v.  Troy  Iron  &  Nail  Fac- 
tory  15  Howard 447 

Corn-Planter  Patent 23  Wallace.    ...  18,  39,  40,  49,  77,  129, 

155,  176,  255 

Cote  v.  Moffitt... 15  Fed.  Rep 178,  373 

Cotter  v.  Copper  Co... 13  Fed.  Rep 245 

Cowing  v.  Ramsey 8  Blatch 311,  374,  387,  397 

Cox  v.  Griggs 1  Bissell 353 

Crary  v.  Smith 2  Comstock  (N.  Y.) 471 

Crompton  v.  Belknap  Mills 3  Fisher 79,  189? 

Crompton  v.  Knowles 7  Fed.  Rep 31 

Cross  v.  Mackinnon 11  Fed.  Rep 255 

Crouch  v.  Roemer 103  U.  S 26 

Crowell  v.  Parmeter 3  Bann.  &  Ard 467 

Cummings  v.  Plaster  Co 6  Blatch 380 

Curran  v.  Arkansas 15  Howard 303 

Cutter  Co.  v.  Sheldon 10  Blatch 203 

Cutting  v.  Myers. 4  Washington 315,  317 

Dale  v.  Rosevelt .  .1  Paige  (N.  Y.) 336,  437 

Dalton  v.  Nelson 13  Blatch 22 

Dare  v.  Boylston 6  Fed.  Rep 223 

Davidson's  Ex's  v.  Johnson 16  New  Jersey 410 

Davis  v.  Murphy '. 2  Rich.  (S.  C.) 336 

Davis  v.  Palmer 2  Brock 30 

Dawes  v.  Taylor 14  Reporter 414 

Day  v.  Car-Spring  Co 3  Blatch 324,  453 

Day  v.  Hartshorn 3  Fisher 458,  465 

Day  v.  Rubber  Co 20  Howard 372 

Day  v.  Stellman 1  Fisher 221,  372 

Day  v.  Woodworth 13  Howard 378,  396,  398 

Dean  v.  Mason 20  Howard., 447,  485 


XXXI V  TABLE    OF    CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book, 

Dedekam  u.  Vose 3  Blatch 378,  379,  382 

De  Florez  v.  KaynokVs 14  Blatch 79 

De  Florez  v.  Raynolds 17  Blatch 114, 118,  119,  366,  423 

Delano  v.  Scott Gilpin 294 

Delaware  Coal  and  Ice  Co.  v.  Packer.  .5  Bann.  &  Ard 129 

Dennis  v.  Eddy 12  Blatch 380 

Dental  Vulcanite  Co.  v.  Davis ...  .102  U.  S 253 

Dental  Vulcanite  Co.  v.  Van  Antwerp .  2  Bann.  &  Ard 388 

Dental  Vulcanite  Co.  v.  Wetherbee. .  .2  Cliff 165,  178 

Detroit    Lubricator     Mfg.    Co.    v. 

Eenchard 9  Fed.  Rep 41 

Detweiler  v.  Voege 8  Fed.  Rep 219 

De  Ver  Warner  v.  Bassett 7  Fed.  Rep 461 

De  Witt  v.  Mfg.  Co 5  Hunn.  (N.  Y.) 214 

Dexter  v.  Arnold 5  Mason 441,  445,  446 

Dexter  v.  Arnold 2  Suinner 513 

Dezell  v.  Odell 3  Hill  (N.  Y.) ...  226 

Dibble  v.  Augur 7  Blatch 288 

Dickerson  v.  Colgrove 100  U.  S 335 

Dittmar  v.  Rix 1  Fed.. Rep  ...'.. 245 

Dodge  v.  Card 2  Fisher    463 

Donnell  v.  Insurance  Co 2  Sumner 513 

Dorsey  Harvester  Rake  Co.  v.  Marsh.  .6  Fisher 469,  477 

Dorsey  Rake  Co.  v.  Mfg.  Co 12  Blatch 216,  220 

Doubleday  v.  Roess 11  Fed.  Rep , 25 

Doubleday  v.  Sherman 4  Fisher 483 

Doughty  v.  West 2  Fisher 417,  457,  458 

Doughty  v.  West 6  Blatch 233 

Dowell  v.  Mitchell 105  U.  S 413 

Downton  v.  Allis 9  Fed.  Rep 198,  200 

Downton  v.  Mfg.  Co 9  Fed.  Rep 198 

Draper  v.  Hudson 1  Holmes 476 

Draper  v.  Potoniska  Mills 3  Bann.  &  Ard 41 

Draper  v.  Wattles 3  Bann.  &  Ard 61,  64,  66,  84 

Dreskill  v.  Parish " 5  McLean 380 

Dubois  v.  Railroad  Co  5  Fisher 335,  336 

Duffy  v.  Duncan 35  New  York 505 

Dunbar  v.  Albert  Field  Tack  Co 4  Bann.  &  Ard 18 

Dunbarv.  Myers 94  U.S... 25,  144,  252,  2C4,  335 

Dunham  v.  Railroad  Co 7  Bissell 214,  221 

Duponti  v.  Mussy 4  Washington 408 

Dyer  v.  Rich 1  Metcalf  (Mass.) 198,  203 

Dyson  v.  Danforth  4  Fisher 363 

Earnes  v.  Cook 2  Fisher 246 

Eames  v.  Godfrey 1  Wallace 252,  254,  264 


TABLE    OF    CITED   CASES.  XXX  V 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Earle  v.  Hall 22  Pickering  (Mass.) , 344 

Earth  Closet  Co.  v.  Fenner 5  Fisher 472 

Eastman  v.  Bodfish 1  Story 318 

Eastman  v.  Hinckel 5  Bann.  &  Ard 270 

Edgarton  v.  Mfg.  Co 9  Fed.  Hep 175 

Egbert  v.  Lippmann 104  U.  S 63 

Elastic  Fabrics  Co.  v.  Smith 100  U.  S 140,  381,  448 

Elder  v.  Bemis .   . .  .2  Metcalf  (Mass.) 308 

Elder  v.  Bradley 2  Sneed  (Tenn.) 343 

Elizabeth  v.  Pavement  Co 97  U.  S 46,  62,  63,  65,  267,  296, 

404,  485,  486,  487,  488, 
490,  491,  501,  503 

Elliott  v.  Peirsol 1  Peters 475 

Ellithorp  v.  Robertson 4  Blatch 41 

Elm  City  Co.  v.  Wooster 6  Fisher 64,  418 

Elmendorf  v.  Taylor 10  Wheaton 415,  427 

Ely  v.  Mfg.  Co 4  Fisher 454,  468 

Emerson  v.  Hogg 2  Blatch 75,  83 

Emerson  v.  Simm 6  Fisher ...388,  398 

Emigh  v.  Chamberlin 2  Fisher. 224 

Emigh  v.  Railroad  Co 6  Fed.  Hep.  .390,  401,  487,  495,  498,  500 

Erie  Railway  Co.  v.  Ramsay 45  New  York 475 

Eunson  i>.  Dodge 18  Wallace 193 

Eureka  Co.  v.  Bailey  Co 11  Wallace 158 

Evans  v.  Eaton 3  Wheaton 133,  324,  328,  360 

Evans  v.  Eaton 7  Wheaton 384 

Evans  v.  Hettich 7  Wheaton 371 

Evans  v.  Jordan 9  Cranch 184 

Everett  v.  Thatcher 3  Bann.  &  Ard 460 

Evory  v.  Burt 15  Fed.  Rep 260 

Exparte  Mann.. 17  Off.  Gaz 113 

Exparte  Robinson 2  Bissell 105 

Exparte  Schollenberger 96  U.  S 283 

Falley  v.  Giles 29  Indiana 200 

Farrington  v   Detroit 4  Fisher 193 

Farrington  v .  Gregory 4  Fisher 220 

Faulks  v.  Kamp 17  Blatch  204 

Ferrett  v.  Atwill ; 1  Blatch 238,  239 

Fischer  v.  Hayes 6  Fed.  Rep 318,  352,  427 

Fischer  v.  Hayes 16  Fed.  Rep 510 

Fischer  v.  Neil.' 6  Fed.  Rep 197 

Fitch  v.  Bragg 16  Fed.  Rep 393 

Flower  v.  Rayner 5  Fed.  Rep 162 

Footeu.  Silsby 1  Blatch 328 

Forbes  v.  Stove  Co 2  Cliff 180 

Forbush  v.  Bradford. .  .  .1  Fisher. .  .  .465,  468 


XXXVI  TABLE    OF    CITED   CASES. 

Hames  of  Cases.  Where  reported.  Pages  in  this  book. 

Forbush  v.  Cook 2  Fisher 25 

Forehand  v.  Porter 15  Fed.  Rep 413 

FOBS  v.  Herbert 1  Bissell 245,  254 

Foster  v.  Lindsay 3  Dillon 230 

Foster  v.  Moore 1  Curtis 459,  470 

French  v.  Edwards  21  Wallace 376 

French  v.  Rogers 1  Fisher 115,  166 

Fry  v.  Quinlan 13  Blatch 87 

Fry  v.  Yeaton 1  Cranch's  Circuit  Court  Reports.  379 

Fuller  v.  Yentzer 94  U.  S 130,  252,  264 


Gage  v.  Herring 107  U.  S. 178,  373 

Gaines  v.  Fuentes 92  U.  S 278,  280 

Gallahue  v.  Butterfield 10  Blatch 177 

Gamewell  Fire  Alarm  Telegraph  Co. 

v.  Brooklyn 14  Fed.  Rep 217,  291 

Gamewell  Fire  Alarm  Telegraph  Co. 

v,  Chillicothe. . ." 7  Fed.  Rep 303 

Gardner  v.  Howe 2  Clif 112 

Garretson  v.  Clark 15  Blatch 490 

Garretson  v.  Clark  4  Bann.  &  Ard 506 

Gay  v.  Cornell 1  Blatch 87,  196 

Gayler  v.  Wilder 10  Howard 42,  48,  67,  196, 

197,  207,  216,  291 

Gelpcke  v.  Dubuque 1  Wallace 318 

Gear  v.  Fitch 3  Bann.  &  Ard 201 

Gear  v.  Grosvenor 1  Holmes 189,  190 

Giant   Powder  Co.  v.  Vigor! t  Pow- 
der Co 6  Sawyer 161 

Gibson  v.  Cook 2  Blatch 200,  202 

Gibson  v.  Gifford 1  Blatch 185 

Gibson  v.  Harris 1  Blatch 166 

Gibson  v.  Van  Dresar 1  Blatch 456,  468,  470 

Gilbert  &  Barker  Mfg.  Co.  v.  Bussing.  12  Blatch 227,  470 

Gill  v.  Wells 22  Wallace 77,  176,  177,  252,  258 

Gillespie  v.  Cummings 3  Sawyer 303 

Gilmore  v.  Golay 3  Fisher 232 

Gilpin  v.  Consequa 3  Washington 398 

Glue  Co.  v.  Upton 97  U.  S 23 

Godfrey  v.  Eames 1  Wallace 95 

Goff  v.  Stafford 3  Bann.  &Ard 118 

Gold   and   Silver  Ore   Co.  v.  Disin- 
tegrating Ore  Co 6  Blatch 228 

Goldsmith  v.  Collar  Co 18  Blatch 291 

Goodyear  v.  Allyn 6  Blatch 366,  406,  424,  465 

Goodyear  v.  Berry 3  Fisher 456,  464 

Goodyear  v.  Bishop 4  Blatch 292 


TABLE   OF    CITED   CASES.  XXXV11 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Goodyear  v.  Bishop 2  Fisher 387,  393,  398 

Goodyear  v.  Gary 4  Blatch 201 

^Goodyear  v.  Hills 3  Fisher 470 

Goodyear  v.  Hullihen 3  Fisher 179 

Goodyear  v.  McBurney 3  Blatch 291 

Goodyear  v.  Mullee 5  Blatch 294,  457,  482 

Goodyear  v.  Phelps 3  Blatch 298 

Goodyear  v.  Railroad  Co 1  Fisher 207,  456 

Goodyear  v.  Beverly  Rubber  Co 1  Cliff 193 

Goodyear  v.  Congress  Rubber  Co 3  Blatch 225,  466 

Goodyear  v.  Rust 3  Fisher 456 

Goodyear  Dental  Vulcanite  Co.  v. 

Davis  3Bann.  &  Ard 433 

Goodyear  Dental  Vulcanite  Co.  t;. 

Evans 3  Fisher 456 

Goodyear  Dental  Vulcanite  Co.  v. 

Folsom 5  Bann.  &  Ard 479 

Goodyear  Dental  Vulcanite  Co.  v. 

Willis 1  Bann.  &  Ard 434 

Gordon  u.  Anthony 16  Blatch 289,  311 

Gorham  v.  White 14  Wallace 270 

Goss  v.  Cameron ; 14  Fed.  Rep 6 

Gottfried  v.  Crescent  Brewing  Co 13  Fed.  Rep 413 

Gottfried  v.  Philip  Best  Brewing  Co. .5  Bann.  &  Ard 362 

Gottfried  v.  Miller 104  U.  S 198 

Gottfried  v.  Moerlein 14  Fed.  Rep 413 

Gould  v.  Rees 15  Wallace - 177,  257 

Gould  v.  Spicer 15  Fed.  Rep 178,  373 

Gould's  Mfg.  Co.  v.  Cowing 12  Blatch 490 

Graham  v.  Mason 1  Holmes 486,  491 

Graham  v.  Mason 5  Fisher 260 

Graham  -o.  Mfg.  Co 11  Fed.  Rep 64,  129,  402 

Graham  v.  McCormick 5  Bann.  &  Ard. 64,  95,  129 

Grant  v.  Raymond 6  Peters 68,  97,  128,  148,  155,  165, 

181,  191,  324,  373 

Gray  v.  James 1  Peters'  Circuit  Court  Reports,  69, 

314,  363 

Gray  v.  Railroad  Co 1  Wool-worth 480 

Green  v.  Austin  22  Off.  Gaz 293 

Green  v.  Biddle 8  Wheaton 102 

Greene  v.  Bishop 1  Cliff 512,  513 

Green  v.  French 4  Bann.  &  Ard 415,  456,  467,  468 

Green  v.  French 11  Fed.  Rep 50,  51 

Green  v.  Gardner 22  Off.  Gaz 294 

Greenleaf  v.  Mfg.  Co 17  Blatch 391 

Greenwood  v.  Bracher 1  Fed.  Rep 462 

Griggs  v.  Gear 3  Gilman  (Illinois) 444 


XXXV111  TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Grover  &  Baker   Sewing   Machine 

Co.  v.  Williams 2  Fisher 453,  456,  458,  459,  460 

Guidet  v.  Brooklyn 105  U.  S 23 

Guidet  v.  Palmer 10  Blatch 469 

Guille  v.  Swan 19  Johnson  (N.  Y.) 295 

Guyon  v.  Serrell 1  Blatch 396 

Hailes  v.  Albany  Stove  Co 16  Ft  d.  Rep 138 

Hailes  v.  Van  Wormer 20  Wallace 24 

Hall  v.  Macneal ..107  U.  S 27,  64 

Hall  v.  Wiles. 2  Blatch 140,  396 

Hamilton  v.  Kingsbury 15  Blatch 220,  224 

Hamilton  v.  Kingsbury 17  Blatch 217,  220,  221 

Hamilton  v.  Rollins 3  Bann.  &  Ard 199 

Hamilton  v.  Simons 5  Bissell 482 

Hammerschlag  v.  Garrett 10  Fed.  Rep 245 

Hammerschlag  v.  Scamoni 7  Fed.  Rep 39 

Hammond's  Appeal 2  Off.  Gaz 86 

Hammond  v.  Hunt 4  Bann.  &  Ard 292 

Hammond  u.  Organ  Co 92  U.  S ...  225 

Hanger  v.  Abbott 6  Wallace 302 

Hapgood  v.  Hewitt ' 11  Fed.  Rep 196 

Harding  v.  Handy ' 11  Wheaton 512,  513 

Harmon  v.  Bird 22  Wendell  (N.  Y.) 198 

Harper  v.  Butler 2  Peters 290 

Harris  v.  Allen 15  Fed.  Rep 253 

Harris  v.  Clark 10  Ohio 212 

Hartell  v.  Tilghman 99  U.  8 282 

Hartshorn  v.  Day 19  Howard 199 

Harwood  v.  Mfg.  Co 3  Fisher 260 

Haselden  v.  Ogden 3  Fisher 396 

Hatch  v.  Moffitt 15  Fed.  Rep 6,  21 

Hathaway  v.  Roach 2  Woodbury  &  Minot 378,  380,  381 

Hausknecht  v.  Claypool 1  Black 213,  302,  342,  348,  383 

Hawes  v.  Antisdel 2  Bann.  &  Ard 50 

Hawes  v.  Cook 5  Off.  Gaz 434 

Hayden  v.  Oriental  Mills 15  Fed.  Rep 302,  341 

Hayes  v.  Dayton .8  Fed.  Rep 303 

Hayes  v.  Leton 5  Fed.  Rep 461 

Hayes  v.  Seton 12  Fed.  Rep 164 

Hayward  v.  Andrews 106  U.  S 216,  289,  414 

Hayward  u.  Andrews 12  Fed.  Rep 199,  414 

Hazelip  v.  Richardson 10  Off.  Gaz 86 

Heald  v.  Rice 104  U.  S 27,  171 

Hebert  v.  Joly 5  Louisiana 406 

Heckers  v.  Fowler  . .  .  .2  Wallace 347,  348,  377,  382 


TABLE    OF    CITED   CASES.  XXXIX 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Henderson  v.  Stove  Co 2  Bann.  &  Ard 130 

Hendrie  v.  Sayles 98  U.  S 121,  196,  201,  206,  311 

Henry  v.  Soap-Stone  Stove  Co 5  Bann.  &  Ard 64,  84 

Henry  v.  Stove  Co ' ,  2  Bann.  &  Ard 288 

Henry  v.  Tool  Co 3  Bann.  &  Ard 113 

Herbert  v.  Butler 97  U.  S 383 

Herring  v.  Gage    3  Bann.  &  Ard 486,  487 

Herring  v.  Nelson. . 3  Bann.  &  Ard. 176 

Hewitt  v.  Swift 3  Allen  (Mass.) 300 

Hiatt  v.  Twomey 1  Devereux  &  Battle's  Equity  Cases 

(N.  C.) 204 

Hicks  v.  Kelsey 18  Wallace 21 

Hill  v.  Epley 31  Penn.  State 226 

Hill  v.  Thuerner 13  Indiana 198 

Hill  v.  Whitcomb 1  Holmes.. 216 

Himely  v.  Rose 5  Cranch 447 

Hipp  v.  Babin 19  Howard 286,  414,  448 

Hitchcock  v.  Tremaine 9  Blatch 441,  442 

Hitchcock  u.  Tremaine 4  Fisher 130 

Hockholzer  v.  Eager 2  Sawyer 467 

Hodge  v.  North  Missouri  Railroad 

Co 1  Dillon 210 

Hodge  v.  Railroad  Co 6  Blatch 193,  285,  289,  455,  466,  469 

Hoe  v.  Boston  Daily  Advertiser 14  Fed.  Rep 469 

Hoe  v.  Kahler 12  Fed.  Rep 79 

Hoeltge  v.  Hoeller 2  Bond 229 

Hoffheins  v.  Brandt. 3  Fisher 179 

Hogg  v.  Emerson 6  Howard 129 

Hogg  v.  Emerson 11  Howard 130,  374 

Holbrook  v.  Small 3  Bann.  &  Ard 398 

Holden  v.  Curtis 2  New  Hampshire 198,  202 

Holliday  v.  Pickhardt 12  Fed.  Rep 462 

Holt  v.  Keeler 13  Fed.  Rep 164 

Herman  Patent  Mfg.   Co.  v.  Rail- 
road Co 15  Blatch 303 

Hotchkiss  v.  Greenwood 11  Howard 21 

Hotchkiss  v.  Greenwood 4  McLean 35 

Hotchkiss  v.  Oliver 5  Denio  (N.  Y.) 330 

Houston  v.  Moore 5  Wheaton 275,  278,  279 

Howeu.  Morton    1  Fisher 463,  469,  470 

Howe  v.  Russell 36  Maine 513 

flowe  v.  Williams 2  Cliff 245 

Howes  v.  McNeal 3  Bann.  &  Ard 60,  95 

Howes  v.  McNeal 5  Bann .  &  Ard 40 

Howes  v.  Nute 4  Cliff 311,  397 

Hubbell  u.  De  Land 14  Fed.  Rep 409,  422 

Hudson  v.  Draper 4  Fisher 353 


Xl  TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Hughes  v.  Blake 6  Wheaton 411,  426 

Hull  v.  Commissioner  of  Patents. . .  .7  Off.  Gaz ...  .85,  88 

Hull  v.  Commissioner  of  Patents. . .  .8  Off.  Gaz 85,  88 

Humiston  v.  Stainthorp 2  Wallace 439 

Humphreys  v.  Douglass 10  Vermont 293 

Hunnicutt  v.  Peyton 102  U.  S 386 

Hussey  v.  Whiteley 2  Fisher  .    473 

Ulingworth  v.  Spaulding 9  Fed.  Hep 37 

Imhaeuser  v.  Buerk 101  U.  S 45,  253,  255,  259 

Imlay  v.  Kailroad  Co   4  Blatch 311 

India-Rubber  Comb  Co.  v.  Phelps. .  .4  Fisher 441 

Indianapolis  &  St.  Louis  Railroad 

Co.  v.  Hoist 93  U.  S 385 

Ingalls  v.  Tice 14  Fed.  Rep 291 

Ingersoll  v.  Jewett 16  Blatch 336 

Ingersoll  v.  Musgrove 3  Bann .  &  Ard 393 

In  re  Hemiup 3  Paige  (N.  Y.) 512,  513 

In  re  John  J.  Squire 3  Bann.  &  Ard 88 

Insurance  Co.  v.  Eggleston 96  U.  S 223 

Insurance  Co.  v.  Lanier 95  U.  S 383 

Insurance  Co.  v.  Sea 21  Wallace 375,  376 

Irwin  v.  McRoberts 4  Bann.  &  Ard 469 

Isaacs  v.  Cooper 4  Washington 460 

Ives  v.  Hamilton 92  U.  S 266 

Jacob  v.  United  States 1  Brockenbrough 239,  240 

Jacobs  v.  Baker 7  Wallace 14 

Jacobs  v.  Hamilton  County 4  Fisher 292 

James  v.  Campbell 104  U.  S 101,  107,  161,  287,  364 

Jenkins  v.  Greenwald 2  Fisher 311,  464,  477,  488 

Jennings  v.  Kibbe 10  Fed.  Rep 353 

Jennisons  v.  Leonard 21  Wallace 376 

Johnsen  v.  Fassman .1  Woods 60 

Johnson  v.  McCullough 4  Fisher 41,  188 

Johnson  v.  Railroad  Co 105  U.  S 164,  176 

Johnson  v.  Root 1  Fisher 353 

Johnson  v.  Root 2  Clif 257,  374 

Jolliffe  v.  Collins 21  Missouri 205 

Jones  v.  Bank 5  How.  (Miss.) 472 

Jones  v.  Barker 11  Fed.  Rep 62,  132 

Jones  v.  Buckell 104  U.  S 384 

Jones  v.  Morehead 1  Wallace 447 

Jordan  v.  Dobson 2  Abbott's  U.  S.  Reports 176,  184, 

185,  191,  476 

Judson  v.  Bradford  . .  .  .3  Bann.  &  Ard 389,  392 


TABLE   OF   CITED    CASES.  xi 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Judson  v.  Cook 11  Barbour  (N.  Y.) 294 

Judson  v.  Cope 1  Fisher 38 

Kelleher  v.  Darling 3  Bann.  &  Ard 61 

Kellsu.  McKenzie 9  Fed.  Rep 170 

Kendall  v.  Winsor 21  Howard 58,  59,  70,  104,  107 

Kendrick  v.  Emmons 2  Bann.  &  Ard 113,  124 

Kendrick  v.  Einmons .3  Bann.  &  Ard 254 

Kendrick  v.  United  States 1  Gallison 239 

Keplinger  v.  De  Young.  10  Wheaton 295 

Kerosene  Lamp  Heater  Co.  v. 

Fisher 5  Bann.  &  Ard 507 

Kerosene  Lamp  Heater  Co.  v.  Lit- 

tell 3  Bann.  &  Ard 170,  174,  176 

Ketchum  Harvester  Co.  v.  Johnson 

Harvester  Co 8  Fed.  Rep... 394 

Keystone  Bridge  Co.  v.  Iron  Co 95  U.  S -. 133 

King  v.  Cement  Co 6  Fisher 260 

King  v.  Frostel 4  Bann.  &  Ard 20 

Kinsman  v.  Parkhurst 18  Howard 447 

Kirby  v.  Armstrong 19  Off.  Gaz 491 

Kirby  v.  Mfg.  Co 10  Blatch 176 

Kirby  Bung  Mfg.  Co.  v.  White 1  McCrary  456,  463,  469 

Klein  v.  Russell 19  Wallace 56,  132,  175,  351,  372 

Knapp  v.  Shaw 15  Fed.  Rep 438 

Knight  v.  Railroad  Co Taney's  Circuit  Ct.  Decisions,  163,  175 

Knox  v.  Loweree 1  Bann.  &  Ard 60 

Knox  v.  Quicksilver  Mining  Co 6  Sawyer 252,  487,  498,  508 

Konold  v.  Klein 3  Bann.  &  Ard 350 

La  Baw  v.  Hawkins 2  Bann.  &  Ard 387,  391,  490,  492 

Leake  v.  Gilchrist 2  Devereaux  (N.  C.) 290 

Lee  v.  Blandy 2  Fisher 352 

Leggett  v.  Avery 101  U.  S 59,  156,  175,  364 

Le  Fever  v.  Remington 13  Fed.  Rep 133,  252 

Leffingwell  v.  Warren 2  Black 302 

Lehnbeuter  v.  Holthaus 105  U.  S 56 

Lenox  v.  Roberts 2  Wheaton 289 

Le  Roy  v.  Tatham 14  Howard 125 

Lewis  v.  Johns 34  California 295 

Lewiston  Falls  Mfg.  Co.  v.  Frank- 
lin Co 54  Maine 452 

Lexington  &  Ohio  Railroad  Co.  v. 

Applegate 8  Dana  (Ken. ) 475 

Liddle  v.  Cory 7  Blatch 481,  482 

Liggett  &  Myers  Tobacco  Co.  v. 

Miller. .  1  McCrary 229 


xlii  TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Lightner  v.  Railroad  Co 1  Lowell 224 

Lindsay  r.  Stein 10  Fed.  Rep 96 

Little  f.  Downing 37  New  Hampshire    366 

Littlefield  v.  Perry 21  Wallace 166,  206,  207,  291, 

292,  402,  503 

Livingston  v.  Jones 1  Fisher 353 

Livingston  v.  Woodworth 15  Howard 485 

Lockwood  u.  Cleveland 6  Fed.  Rep 230 

Locomotive  Safety  Truck  Co.  v. 

Railroad  Co 2  Fed.  Rep 398,  401,  487,498 

Locomotive  Truck  Co.  v.  Railway  Co. .  10  Blatch 304 

Loercher  v.  Crandal 11  Fed.  Rep 254 

Loom  Co.  v.  Higgins 105  U.  S 20,  47,  123,  134,  330,  363 

Loomis  v.  Loomis 26  Vermont 202 

Lorillard  v.  Ridgway 4  Bann.  &  Ard  20 

Lovellt-.  Davis 101  U.  S 384 

Lowell  Mfg.  Co.  v.  Hartford  Carpet 

Co 2  Fisher 478 

Ludwig  v.  Stewart 32  Michigan 343 

Lull  v.  Clark 13  Fed.  Rep 130 

Lyel  v.  Miller 6  McLean 378 

Lyman  Ventilating  and  Refrigerator 

Co.  v.  Lalor 1  Bann.  &  Ard 40 

Mabie  v.  Haskell 2  Cliff 30,  246,  253 

Macaulay  v.  Machine  Co 9  Fed.  Rep 464 

Machine  Co.  v.  Murphy 97  U.  S 254,  259 

MacKay  v.  Jackman 12  Fed.  Rep 5 

Mackaye  v.  Mallory 12  Fed.  Rep 199 

Magic  Ruffle  Co.  v.  Douglas 2  Fisher 54,  393 

Mahn  v.  Harwood 3  Bann.  <fe  Ard 28 

Maltby  v.  Bobo 14  Blatch 294 

Manning  v.  Isinglass  Co 108  U.  S 66 

Manufacturing  Co.  v.  Cowing 105  U.  S 490,  492 

Manufacturing  Co.  v.  Ladd 102  U.  S 168,  177 

Many  u.  Jagger 1  Blatch 326 

Many  v.  Sizer 1  Fisher 49,  271,  353,  463 

Marks  v.  Corn 11  Fed.  Rep 463 

Marsh  v.  Commissioner 3  Bissell 61 

Marsh  v.  Dodge 4  Hun.  (N.  Y.) 221 

Marsh  v.  Nichols 15  Fed.  Rep 122 

Marsh  v.  Seymour 97  U.  S 155,  169,  401 

Marston  v.  Sweet.. .'. 66  New  York 221 

Marston  v.  Sweet 82  New  York 222 

Martin  v.  Hunter's  Lessee 1  Wheaton 275.  277,  279 

Mason  v.  Graham 23  Wallace 259,  491 

Mason  r.  Railroad  Co.. .  .  .52  Maine  . .  .  513 


TABLE   OF   CITED   CASES.  xliii 

Names  of  Case*.  Where  reported.  Page*  in  this  book. 

Massie's  Heirs  v.  Graham's  Adm'rs. .  .3  McLean. 445 

Matthews  v.  Machine  Co 105  U.  S 164 

Matthews  v.  Mfg.  Co 18  Blatch 304 

Matthews  v.  Schoneberger 4  Fed.  Rep 130 

Matthews  v.  Skates 1  Fisher 268,  272 

Matthews  v.  Spangenberg 14  Fed.  Rep 145,  391 

Maxwell  v.  Kennedy 8  Howard 416.  422 

May  f.  Chaffee 2  Dillon 200,  215,219 

May  v.  Le  Claire 11  Wallace 203 

Mayburry  v.  Brien 15  Peters 212 

Maynard  v.  Pawling 5  Bann.  Jb'Ard 296 

McCluny  v.  Silliman. 3  Peters 302 

McClure  v.  Jeffrey 8  Indiana  205 

McClurg  v.  Kingsland 1  Howard 8,  102,  110,  133 

McComb  v.  Brodie 1  Woods 129,  245,  246,  387,  388 

McComb  v.  Ernest 1  Woods 53,  245,  460 

McCormick  v.  Jerome 3  Blatch .-  481 

McConnick  v.  Seymour 2  Blatch 71,  349,  361 

McCormick  v.  Seymour 3  Blatch 398 

McCormick  r.  Talcott 20  Howard 130,  262 

McCulloch  v.  Maryland 4  Wheaton 340 

McKay  v.  Jackman 16  Reporter 476 

McKay  v.  Wooster 2  Sawyer 208,  219 

McKeever  v.  United  States 23  Off.  Gaz. 107,  226,  286.  394 

McKenna  v.  Fisk 1  Howard 313 

McKernan  v.  Hite 6  Indiana 202 

McLean  v.  Fleming 96  U.  S 416 

McMahon  v.  Tyng 14  Alien  (Mass.) 358 

McMickin  v.  Perin 18  Howard 510 

McMillan  v.  Barclay 5  Fisher 96,  226 

M'Millan  v.  Rees 5  Bann.  &  Ard 47,  129 

McMillin  v.  Conrad 16  Fed.  Rep 469 

McMurray  v.  Miller 16  Fed.  Rep 20 

IF  Neil  r.  Holbrook 12  Peters 302 

McNish  v.  Everson 5  Bann.  <fe  Ard 42 

Me  Williams  v.  Webb 32  Iowa 202 

McWilliams  Mfg.  Co.  v.  Blundell 11  Fed.  Rep 470 

Merchant  r.  Lewis 1  Bond 378 

Merriam  v.  Drake 5  Fisher 254 

Merriam  v.  Smith 11  Fed.  Rep 289 

Merrill  v.  Yeomans 94  U.  S 104 

Mevs  v.  Conover 11  Off.  Gaz 166,  496 

Mewes'  Appeal 2  Off.  Gaz 86 

Meyer  v.  Bailey 2  Bann.  &  Ard 180 

Meyer  v.  Pritchard 1  Bann.  &  Ard 29 

Middletown  Tool  Co.  v.  Judd. .        .  .3  Fisher, .  .  179 


TABLE    OF    CITED    CASES. 
Names  of  Cases.  Where  reported  Pages  In  this  book. 

Mill  v.  Mclntyre 6  Peters 427 

Miller  v.  Brass  Co 104  U.  S 155,  156,  163,166,  332,422 

Milligan   &  Higgins    Glue   Co.    v. 

Upton 1  Bann.  &  Ard 177 

Millner  v.  Schofield 4  Hughes 296 

Millner  v.  Voss 4  Hughes ;    26 

Minturn  v.  Seymour. ;  .4  Johnson's  Chancery  (N.  Y.) 472 

Mitchell  v.  Hawley 16  Wallace 193,  194,  216,  220 

Mitchell  v.  Tilghman.   ; 19  Wallace 348,  503 

Moat  v.  Holbein. 2  Edwards'  Chancery  (N.  Y.) 475 

Moffitt  v.  Garr 1  Black 165 

Moody  v.  Fiske 2  Mason 245 

Moore  v.  Bare 11  Iowa 202 

Moore  v.  Marsh 7  Wallace 199,  207,  288,  291 

Morey  v.  Lockwood 8  Wallace 44,  155,  156,  266 

Morris  v.  Barrett 1  Bond 245 

Morris  v.  Mfg.  Co 3  Fisher 465,  469,  470 

Morris  v.  Shelbourne 4  Fisher 469 

Morton  v.  Infirmary 5  Blatch 3,  327 

Mowry  v.  Railway  Co 5  Fisher 462 

Mowry  v.  Whitney,  No.  1 14  Wallace 192,  233,  234 

Mowry  v.  Whitney,  .No.  2 14  Wallace 9,  243,  493,  502 

Mumma  v.  Potomac  Co 8  Peters 303,  476 

Munson  v.  New  York 11  Fed.  Rep 442 

Munson  v.  New  York 16  Fed.  Rep 485 

Murdoch  v.  Finney 21  Missouri 202 

Myers  v.  Don 13  Blatch 411,  426 

Myers  v.  Dunbar 1  Bann.  &  Ard 447 

Myers  v.  Frame 8  Blatch 145 

Uathan  v.  Elevated  Railroad  Co 5  Bann.  &  Ard 118 

National  Mfg.  Co.  v.  Myers 15  Fed.  Rep 20 

National  Spring  Co.  v.  Mfg.  Co 12  Blatch 156 

Neale  v.  Neales 9  Wallace 408 

Neale  v.  Walker 1  Cranch's  Circuit  Court  Reports .  337 

Nellisv.  Mfg.  Co 13  Fed.  Rep 197,  303 

Nellis  v  McLanahan 6  Fisher 303 

Nelson  v.  McMann 4  Bann.  &  Ard 291 

Nesmith  v.  Calvert .1  Woodbury  &  Minot 206 

Nevins  v.  Johnson 3  Blatch 311 

New  v.  Warren 22  Off.  Gaz 6,  164 

New  American  File  Co.  v.  Nicholson 

File  Co 8  Fed.  Rep 114,  189 

New  York  v.  Ransom 23  Howard 388,  395,  502 

New  York  &  Baltimore  Coffee 

Polishing    Co.   v.    New    York 

Coffee  Polishing  Co 9  Fed.  Rep 234,  407 


TABLE    OF    CITKD    CASES.  xv 

Names  of  Cases.  Where  reported.  Pages  In  this  book. 

New    York     &     Baltimore    Coffee 

Polishing    Co.    v.    New    York 

Coffee  Polishing  Co 11  Fed.  Rep 407 

New  York  Belting  and  Packing  Co. 

v.  S?bley 15  Fed.  Rep 130 

New  York  Grape  Sugar  Co.  v. 

American  Grape  Sugar  Co 10  Fed.  Rep 457,  461,  46'J 

New  York  Pharmacal  Association  v. 

Tilden 14  Fed.  Rep 198,  323 

Newell  u.  West 13  Blatch 211 

Newton  v.  Mfg.  Co 14  Fed.  Rep ; 1G4 

Nichols  v.  Newell 1  Fisher , 238 

Nicholson  Pavement  Co.  v.  Jenkins.  .14  Wallace 196 

Nims  v.  Johnson 7  California 366 

Norris'  Appeal 71  Penn.  Stat 505 

Northwestern  Extinguisher  Co.  v. 

Philadelphia  Extinguisher  Co.. .  .1  Bann.  &  Ard 39,  42,  120,  122,  179, 

210,  289 

Nourse  v.  Allen 3  Fisher 303 

Noyes  v.  Willard 1  Woods 411 

O'Brien  v.  Galagher 25  Connecticut 78 

O'Reilly  v.  Morse 15  Howard 3,  8,  34,  38,  42,  75, 

114,  115,  125,  127,  137, 
140,  141,  142,  145,  174, 
175,  246,  253,  256,  265, 
327,  330,  363,  448. 

Odiorne  v.  Winkley 2  Gallison 355 

Oliphant  v.  Salem  Flouring  Mills  Co .  5  Sawyer 236 

Oliver  v.  Piatt 3  Howard 203 

Onderdonk  v.  Fanning 5  Bann.  &  Ard 481 

Orr  v.  Littlefield 1  Woodbury  &  Minot 453,  456, 

459,  470 

Pacific  Bank  v.  Robinson 57  California ...  209 

Pacific  Iron  Works  v.  Newhall 34  Connecticut, 222 

Packet  Co.  v.  Sickles 5  Wallace 308 

Packet  Co.  v.  Sickles w  .  .19  Wallace 309,  311,  328,  388,  502 

Page  v.  Ferry 1  Fisher .76,  353 

Page  v.  Telegraph  Co 18  Blatch 442,  465 

Palmer  v.  Gatling  Gun  Co 8  Fed.  Rep 130 

Paper-Bag  Cases 105  U.  S 193,  208,  219,  291,  381 

Parham  v.  Buttonhole  Co 4  Fisher 50,  130 

Parker  v.  Bigler 1  Fisher 352,  379 

Parker  v.  Brant 1  Fisher 404,  452,  454,  456,  465 

Parker  v.  Ferguson 1  Blatch 49 

Parker  v.  Hall 2  Fisher 302,  341 

Parker  v.  Hallock 2  Fisher 341 

Parker  u.  Hatfield. .  , .  .4  McLean. .  , .  .432.  439 


TABLE    OF    CITED    CASES. 
Names  of  Cases.  "WTiere  reported.  Pages  in  this  book. 

Parker  v.  Hawk 2  Fisher 302,  341 

Parker  v.  Haworth 4  McLean 272,  318,  352 

Parker  v.  Hulme 1  Fisher 46,  272,  396 

Parker  v.  Sears 1  Fisher 476 

Parker  v.  Stiles 5  McLean ;141,  142 

Parker  v.  The  Judges 12  Wheaton 480 

Parkhurst  v.  Kinsman 1  Blatch. . .  473 

Parkhurst  v.  Kinsman 2  Blatch 428 

Parks  v.  Booth 102  U.  S.  .45,  77,  97,  379,  381,  448,  503 

Parrott  v.  Wikoff 1  Louisiana  An'l 200 

Patterson  v.  Gaines 6  Howard 340 

Patterson  v.  Kentucky 97  U.  S 106 

Patterson  v.  Lyttle .11  Penn.  State 226 

Patterson  v.  Stapler 7  Fed.  Eep 402 

Paynes  v.  Coles 1  Munford  (Va.) 336,  437 

Pearce  v.  Mulford 102  U.  S 18 

Pearl  v.  Ocean  Mills 2  Bann.  &  Ard 176 

Peck  v.  Bacon 18  Connecticut 202 

Peck  v.  Collins 103  U.  S 165,  222 

Pecku.  Collins 70  N.  Y 222 

Peek  v.  Frame 9  Blatch 396 

Peek  v.  Frame 5  Fisher 140,  142 

Peirce  v.  West's  Executors 1  Peters'  Circuit  Court  Eeports. . .  427 

Pelton  v.  Waters 1  Bann.  &  Ard 46 

Pennington  v.  Gibson 16  Howard 370 

Pennington  v.  King 7  Fed.  Kep 47 

Pennock  v.  Dialogue 2  Peters .58,  65,  385 

Pentlarge  v.  Beeston 14  Blatch 457,  462 

Pentlarge  v.  Beeston 1  Fed.  Eep 482 

People  v.  Sturtevant 5  Selden  (N.  Y.) 475 

Perrigo  v.  Spaulding 13  Blatch 227 

Perry  v.  Corning 6  Blatch 311,  397 

Perry  v.  Corning 7  Blatch 204 

Perry  v.  Foundry  Co.  . .". 12  Fed.  Eep 25,  26 

Perry  v.  Starrett 3  Bann.  &  Ard 44,  270 

Peterson  v.  Chemical  Bank 32  N?  Y 290 

Phelps  v.  Brown 4  Blatch 329,  362 

Phelps  u.  Classen 1  Woolworth 200 

Phelps  v.  Jepson 1  Eoot  (Connecticut) 212 

Phelps  v.  Mayer. 15  Howard 385 

Philadelphia  &  Eeading  Eailroad 

Co.  v.  Derby 14  Howard  294 

Philadelphia  <fc  Trenton  Eailroad 

Co.  v.  Stimpson 14  Peters 156,  383 

Philip  v.  Nock 13  Wallace 382,  446 

Philip  u.  Nock 17  Wallace 388,  398 

Phillips  u.  Comstock 4  McLean 328 


TABLE   OF   CITED   CASES.  xlvii 

Names  of  Cases.  .  Where  reported.  Pages  in  this  book. 

Phillips  v.  Detroit 3  Bann.  &  Ard 18,  481,  482,  483 

Phillips  v.  Page 24  Howard 22,  32G 

Pickering  v.  McCullough , 104  U.  S 21,  24,  43 

Picquet  v.  Swan 3  Mason 289 

Pierson  *v.  Screw  Co 3  Story 107,  110 

Pike  v.  Potter 3  Fisher 124 

Piper  v.  Brown 1  Holmes 485,  506,  510,  513 

Pitts  v.  Hall 2  Blatch 32,  59,  71,  362,  419 

Pitts  v.  Hall 3  Blatch 201,  214 

Pitts  v.  Jameson 15  Barbour  (N.  Y.  Supreme  Court).  208 

Pitts  v.  Wemple 1  Bissell 49,  104,  130,  245,  271 

Pitts  v.  Whitman 2  Story 202,  245 

Planing  Machine  Co.  v.  Keith , .  .101  U.  S 23,  58,  59,  95,  96,  326,  417 

Plimpton  u.  Winslow 14  Fed.  Eep 64 

Poppenhusen  v.  Comb  Co  2  Fisher 53 

Poppenhusen  v.  Comb  Co. 4  Blatch 463 

Poppenhusen  v.  Falke 4  Blatch 298 

Poppenhusen  v.  Falke 5  Blatch 31 

Poppenhusen  v.  Falke 2  Fisher 457,  465 

Potter  v.  Braunsdorf 7  Blatch 189,  190,  261 

Potter  v.  Crowell 3  Fisher , 294,  464,  477 

Potter  v.  Dixon 5  Blatch 92,  231 

Potter  v.  Fuller .2  Fisher 456,  457,  468 

Potter  v.  Holland 4  Blatch 180, 197,  291,  456,  468 

Potter  v.  Mack 3  Fisher 476,  477 

Potter  v.  Muller 1  Bond 482 

Potter  v.  Stewart 18  Blatch 174,  261 

Potter  v.  Whitney 1  Lowell 141,  456 

Powder  Co.  v.  Ditmar  Powder  Mfg. 

Co 9  Fed.  Eep 481 

Powder  Co.  v.  Powdel  Works 98  U.  S 167,  169,  173,  174,  332,  365, 

420,  422 

Power  v.  Semmes 1  Cranch's  Circuit  Court  Reports..  380 

Prime  v.  Mfg.  Co. 16  Blatch 201,  203 

Proctor  v.  Brill 16  Fed.  Eep 142 

Prouty  v.  Ruggles 16  Peters,  77,  252,    257,  258,  264,  369 

Provost  v.  Gratz 1  Peter's  Circuit  Court  Eeports. . .   442 

Pullman  v.  Eailroad  Co 5  Fed.  Eep 463 

Purnell  v.  Daniel 8  Iredell's  Equity  Eep.   (N.  C.). . .  453 

Putnam  v.  Yerrington 2  Bann.  &  Ard 174,  434 

Eailroad  Co.   v.  Duboise 12  Wallace 125,  226,  233 

Eailroad  Co.  v.  Howard 7  Wallace 303 

Eailroad  Co .  v .  Mellon 104  U.  S 130 

Eailroad  Co.  v.  Smith 21  Wallace 383 

Eailroad  Co.  v.  Trimble 10  Wallace 196,  198,  199 

Eailroad  Co.  v.  Wheeler 1  Black 283 


Xlviii  TABLE    OF    CITED   CASES. 

Names  of  Cases.  Where  reported.  .  Pages  in  this  book. 

Railroad  Co.  v.  Whitton 13  Wallace 278 

Railway  Co.  v.  Sayles 97  U.  S 53,  130,  253,  262,  329.  369 

Hansom  v.  New  York 1  Fisher 35,  45,  70,  97 

Head  v.  Bowman 2  Wallace 200 

Head  v.  Miller 2  Bissell .324,  341 

Keckendorfer  v.  Faber 92  tJ.  S 24,  128,  356 

Reed  v.  Cutter 1  Story 48,  142,  144 

Reedy  v.  Scott 23  Wallace 428 

Reeves  v.  Bridge  Co 5  Fisher 38 

Reeves  v.  Keystone  Bridge  Co 2  Bann.  &  Ard 439,  441,  442 

Reissner  v.  Anness 3  Bann .  &  Ard 170 

Reissner  v.  Sharp 16  Blatch 113 

Reutgen  v.  Kanowrs 1  Washington 295 

Rhode  Island  v.  Massachusetts 14  Peters 411,  426 

Rich  v.  Lippincott 2  Fisher 48,  268 

Rich  v.  Ricketts 7  Blatch 302,  341 

Richards  v.  West 2  Green's  Chancery  (N.  J.) 475 

Riddick  v.  Moore 65  N.  C. 290 

Riddle  v.  Mandeville 5  Cranch 289 

Ritter  v.  Sen-ell 2  Blatch 208 

Roberts  v.  Buck 1  Holmes 418 

Roberts  v.  Dickey 4  Fisher 39 

Roberts  v.  Harnden 2  Clif 256,  258,  271 

Roberts  v.  Roter 5  Fisher 245 

Roberts  v.  Ryer 91  U.  S 29,  129 

Roberts  v.  Schuyler 12  Blatch 374 

Roberts  v.  Walley 14  Fed.  Rep 352 

Robinson  v.  Randolph 4  Bann.  &  Ard 465,  473 

Roemer  v.  Simon 95  U.  S 417,  418,  444 

Rogers  v.  Abbot 4  Washington 405,  453 

Root  u.  Railway  Co 105  U.  S 292,  311,  397,  401,  412, 

476,  487,  502,  504, 

Rose  v.  Hurley 39  Indiana 205 

Ross  v.  Prentiss 4  McLean 444 

Rowe  v.  Blanchard 18  Wisconsin 52,  360 

Rubber  Co.  v.  Goodyear 9  Wallace 78,  126,  132,  155,  160, 

174,  176,  179,  192,  224, 

225,  289,  290,  334,  418, 

422,  445,  485,  487,  489, 

490,  492,  496 

Ruggles  v.  Eddy 10  Blatch 190 

Rugglesu.  Eddy 11  Blatch 442 

Ram  ford  Chemical  Works  v. 

Hecker 11  Blatch 478 

Rum  ford  Chemical  Works  v. 

Hecker 2  Bann.  &  Ard 296,  336,  434,  476 

Rumford  Chemical  Works  v. 

Vice. 14  Blatch 464,  468,  477 


TABLE   OF   CITED   CASES. 
Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Russell  v.  Barney 6  McLean.  v 370 

Russell  v.  Dodge 93  U.  S 176 

Russell  u.  Place 94  U.  S 127 

Russell  v.  Place 9  Blatch   374,  396 

Ryan  v.  Lee 10  Fed.  Rep 209 

Saint     Louis     Stamping     Co.     v. 

Quimby 4  Bann.  &  Ard 124 

Sanford  v.  Messer 1  Holmes 216,  291 

Sargent  v.  Lamed 2  Curtis 221 

Sargent  v.  Mfg.  Co 17  Blatch 393 

Sargent  v.  Seagrave 2  Curtis 458,  459 

Sarven  v.  Hall 9  Blatch 254 

Sauvinet  v.  Poupono 14  Louisiana  406 

Saxe  v.  Hammond 1  Holmes 296 

Saxton  v.  Aultman 15  Ohio 202 

Sayles  v.  C.  &  N.  W.  Railway  Co 2  Fisher 60 

Sayles  v.  G.  &  N.  W.  Railway  Co. . .  .4  Fisher 42,  49,  51 

Sayles  v.  Dubuque  and  Sioux  City  [340,  342 

Railroad  Co 3  Bann.  &  Ard 188,  189,  206,  311, 

Sayles  v.  Grand  Trunk  Railway 

Co Manuscript  1879 284 

Sayles  v.  Lake  Shore  and  Michigan 

Southern  Railway  Co 9  Fed.  Rep 303,  339,  342 

Sayles  v.  Oregon  Central  Railroad 

Co 4  Bann.  &  Ard 340 

Sayles  v.  Richmond,  Fredericksburg 

&  Potomac  Railroad  Co 4  Bann.  &  Ard. 309,  339 

Sayles'  Executor  v.  Railroad  Co 9  Fed.  Rep 339 

Schillinger  v.  Brewing  Co 24  Off.  Gaz 178 

Schillinger  v.  Gunther 15  Blatch 490 

Schillinger  v.  Gunther 17  Blatch 140,  144 

Schillinger  v.  Gunther 2  Bann.  &  Ard. 482,  483 

Schneider  v.  Bassett 13  Fed.  Rep 457,  460 

Schneider  v.  Thill 5  Bann.  &  Ard 125 

Schoerken  v.  Swift  &  Courtney  & 

Beecher  Co  7  Fed.  Rep 358 

Schott  v.  Benson 1  Blatch .( 381 

Scott  v.  Watson. ... 46  Maine 293 

Searles  v.  Bonton 12  Fed.  Rep 162,  224 

Searles  u.  Merriam .22  Off.  Gaz 28 

Searles  v.  Railroad  Co 2  Woods 480 

Searles  v.  Worden 11  Fed.  Rep 434 

Sears  u.  United  States 1  Gallison 239 

Sedgwick  v.  Cleveland 7  Paige  (N.  Y.) 428 

Selden  v.  Gas-Burner  Co 9  Fed.  Rep 160,  166,  178,  179 

Sergeant  v.  Steinberger 2  Ohio 212 

Sewell  v.  Jones  ..  ..91  U.S...  125,133 


1  TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Seymour  v.  Marsh 6  Fisher 361 

Seymour  v.  McCormick 16  Howard 308,  388,  393,  396,  502 

Seymour  v.  McCormick 19  Howard 358,  141,  142 

Seymour  v.  Osborne 11  Wallace 39,  53,  79,  101,  104, 

126,  127,  129,  157,  169, 

175,  177,  252,  257,  303, 

348,  349,  365,  417 

Sharp  v.  Reissner 9  Fed.  Rep. 426 

Shaw  v.  Boylan 16  Indiana 299 

Shaw  v.  Cooper 7  Peters 69 

Shaw  v.  Lead  Co 11  Fed.  Rep 53,  165,  289 

Shelly  v.  Brannan 4  Fisher 470 

Sheriffs.  Fulton 12  Fed.  Rep , 164 

Shields  v.  Barrow 17  Howard 408 

Shirley  v.  Sanderson 8  Fed.  Rep 50 

Shoup  v.  Henrici 2  Bann.  &  Ard 42 

Shuter  v.  Davis 16  Fed.  Rep 31 

Sickles  v.  Borden 4  Blatch 475,  482 

Sickles  v.  Borden 3  Blatch 255,  257 

Sickles  v.  Mfg.  Co 1  Fisher 311 

Sickles  v.  Mitchell 3  Blatch 457,  468 

Sickles  v.  Tileston 4  Blatch 468 

Sickles  v.  Young 3  Blatch 458 

Siemens'  Appeal 11  Off.  Gaz 167 

Siemens  v.  Sellers 23  Off.  Gaz 119 

Silsby  v.  Foote 14  Howard 126,  143,  253,  325,  355 

Silsby  v.  Foote 20  Howard 364,  446,  501 

Silsby  a.  Foote 1  Blatch 438 

Simpson  v.  Davis 12  Fed.  Rep 44 

Sinclair  v.  Backus 5  Bann.  &  Ard 63 

Singer  v.  Braunsdorf 7  Blatch 91 

Singer  v.  Walmsley 1  Fisher 124,  141,  142,  245,  271 

Sisson  v.  Gilbert 9  Blatch 66,  68 

Sizer  v.  Many 16  Howard 381 

Slack  v.  Walcott 3  Mason 430 

Slawson  v.  Railroad  Co 107  U,  S. 18,  326,  356,  417 

Sleimmer's  Appeal  58  Penn 34 

Smith  v.  Baker's  Administrators 1  Bann.  &  Ard 311,  397 

Smith  v.  Dental  Vulcanite  Co 93  U.  S 22,  30,  38,  60,  95,  130,  175 

Smith  v.  Downing 1  Fisher 246 

Smith  u.Ely 5  McLean 317 

Smith  v.  Felt 50  Barbour  (N.  Y.) 295 

Smith  v.  Halkyard 16  Fed.  Rep 457 

Smith  v.  Mercer 3  Penn.  L.  J.  Reports 180 

Smith  u.  Merriam 6  Fed.  Rep 160 

Smith  v.  Nichols 21  Wallace 26,  144 

Smith  v.  Selden. .  .  .1  Blatch. .  .  200 


TABLE    OF    CITED   CASES.  11 

Names  of  Cases.  Where  reported.  Pages  In  this  book. 

Smith  v.  United  States 1  Gallison 239 

Smith  v.  Woodman 8  Foster  (28  N.  H.) 308 

Snow  v.  Taylor. . . . 4  Bann.  &  Ard 20 

Sohn  v.  Waterson 17  Wallace 338 

Soiie  v.  Palmer 28  Missouri 202 

Southard  v.  Russell .16  Howard 444,  445 

Sparhawk  v.  Mills 5  Gray  (Mass.) 513 

Sparkman  v.  Higgins 1  Blatch 34,  474 

Spaulding  v.  Page 1  Sawyer 227 

Spaulding  v.  Tucker 1  Deady 353 

Spaulding  v.  Tucker 4  Fisher 380 

Spering's  Appeal 71  Penn.  State 300 

Sperry  v.  Ribbans 3  Bann.  &  Ard 467 

Sprague  v.  Mfg.  Co 12  Fed.  Rep 62 

Spring  v.  Domestic  Sewing  Machine 

Co 4  Bann.  &  Ard 461,  467 

Spring  v.  Sewing  Machine  Co  ...... .13  Fed.  Rep 414 

Stafford  v.  Hair-Cloth  Co 2  Cliff 374 

Stainthorp  v.  Humiston 2  Fisher 469,  470 

Stainthorp  v.  Humiston 4  Fisher 41 

Star  Salt  Castor  v.  Grossman 4  Bann.  &  Ard 401,  490 

Steam   Gauge  and  Lantern  Co.  v. 

Miller 8  Fed.  Rep 461 

Steam   Gauge   and  Lantern  Co.  v. 

Miller 11  Fed.  Rep 473 

Steam  Stone  Cutter  Co.  v.  Mfg.  Co. .  .17  Blatch 227,  486,  489,  490,  504 

Steam  Stone  Cutter  Co.  v.  Sheldon. . .  .10  Blatch 218,  223 

Steam  Stone  Cutter  Co.  v.  Sheldon  . .  15  Fed.  Rep 309 

Steam  Stone  Cutter  v.  Shortsleeves.  .16  Blatch 217,  218 

Steiger  v.  Heidelberger 4  Fed.  Rep 294 

Stein  v.  Goddard 1  McAlister 288 

Stephens  v.  Felt 2  Blatch 395 

Stephenson  v.  Railroad  Co 14  Fed.  Rep 42 

Sterrick  v.  Pugsley 1  Central  Law  Journal 454 

Stevens  v.  Baltimore  &  Ohio  Rail- 
road Co  6  Fed.  Rep 311 

Stevens  v.  Cady 14  Howard 106,  219 

Stevens  v.  Gladding 17  Howard 106,  219 

Stevens  v.  Kansas  Pacific  Railway 

Co '. .  .5  Dillon 311 

Stevens  v.  Pritchard 2  Bann.  &  Ard 129 

Still  v.  Reading 20  Off.  Gaz 292,  318 

Stillwell  &  Pierce  Mfg.  Co.  v.  Cin- 
cinnati Gas  Light  and  Coke  Co.  .1  Bann.  &  Ard 41 

Stimpson  v.  Pond 2  Curtis 238,  239 

Stimpson  v.  Baltimore  and  Susque- 

hanna  Railroad  Co 10  Howard 258 

Stimpson  v.  Railroads 1  Wallace's  Circuit  Ct.  Rep. .  .374,  398 


lii  TABLE    OF    CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Stimpson  v.  Rogers 4  Blatch 120,  402 

Stimpson  v.  West  Chester  Railroad 

Co 4  Howard 156,182 

Stimpson  v.  Woodman 10  Wallace 27 

Story  v.  Livingston 13  Peters 510 

Stow  v.  Chicago 104  U.  S , 38 

Stow  ®.  City  of  Chicago 3  Bann.  &  Ard 23,  26 

Streit  v.  Lauter 11  Fed.  Rep 164,  175 

Strobriclge  v.  Lindsay 6  Fed.  Rep 265,  483 

Sturges  v.  Van  Hagen 6  Fisher  232 

Sturgis  v.  Knapp   33  Vermont 475 

Suffolk  Co.  v.  Hayden 3  Wallace. 47,  227,  387 

Sullivan  v.  Judah 4  Paige  (N.  Y.) 475 

Sullivan  v.  Railroad  Co 94  U.  S 415,  416 

Sugar  Refinery  Co.  v.  Mathiesson. . .  .3  Cliff 510 

Suydam  v.  Day 2  Blatch 207 

Swift  v.  Whisen 2  Bond 179 

Sykes  v.  Manhattan  Co 6  Blatch . . .  470 

Tarr  v.  Folsom 1  Bann.  &  Ard 98 

Tatham  v.  Lowber 4  Blatch 486,  503 

Taylor  v.  Archer 8  Blatch 135,   139 

Taylor  i\  Porter 4  Hill  (N.  Y.) 102,  108 

Teese  v.  Huntington 23  Howard 325,  396,  398,  418 

Terhnne  v.  Phillips 99  U.  S 21 

Terry    Clock     Co.    v.    New   Haven 

Clock  Co 4  Bann.  &  Ard 21 

The  Baltimore. 8  Wallace 378 

The  Commander-in-Chief 1  Wallace 512,  513 

The  Moses  Taylor .4  Wallace 278 

The  Santa  Maria 10  Wheaton 447 

The  Tremolo  Patent 23  Wallace ..408,  493 

Theberath   v.  Trimming  Co 5  Bann.  &  Ard 411,  426 

Theberath  v.  Trimming  Co 15  Fed.  Rep 16,  64 

Thomas  v.  Harvie's  Heirs 10  Wheaton 444 

Thomas  v.  Quintard 5  Duer  (N.  Y.) 204 

Thompson  v.  Mendelsohn 5  Fisher 464 

Tilghman  v.  Mitchell. .  .  .9  Blatch 189,  191,  457,  470,  498, 

503,  505 

Tilghman  v.  Proctor 102  U.  S 10,  124,  242,  504 

Tompkins  v.  Gage 5  Blatch 127 

Toohey  v.  Harding 4  Hughes 245 

Tracy  v.  Torrey 2  Blatch 470 

Trader  v.  Messmore 1  Bann.  &  Ard 133 

Trecothick  v.  Austin 4  Mason 290 

Troy   Iron   and    Nail    Factory    v. 

'  Corning 14  Howard 218,  224 


TABLE    OF    CITED   CASES.  llil 

Names  of  Cases.  Where  reported.  rages  in  this  liook. 

Troy    Iron    and     Nail    Factory  v. 

Corning 15  Howard 448 

Troy  Iron  and  Nail  Factory  v. 

Corning 6  Blatch 488,  490,  503,  508,  510 

Troy  Iron  and  Nail  Factory  v. 

Corning 7  Blatch 379 

Tuck  v.  Bramhill 6  Blatch  126,  139,  144 

Tucker  v.  Carpenter. . .  „ 1  Hempstead 475 

Tucker  v.  Spalding 13  Wallace 29,  373,  397 

Tufts  v.  Tufts 3  Woodbury  &  Minot 441 

Turnbull  v.  Plow  Co 6  Bissell 202,  203 

Turrell  v.  Spaeth 3  Bann.  &  Ard 176,  254,  255 

Turrill  v.  Railroad  Co 1  Wallace 50,  132,  372 

Tyler  v.  Boston 7  Wallace 78,  124,  268,  355 

Tyler  v.  Galloway 12  Fed.  Rep 140,  145 

Tyler  u.Hyde 2  Blatch 232 


Union  Bank  v.  Kerr 2  Maryland  Chancery 452 

Union  Mfg.  Co.  v.  Lounsbury 41  New  York 193 

Union  Mfg.  Co.  v.  Lounsbury 42  Barbour  (N.  Y.) 223 

Union  Metallic  Cartridge  Co.  v. 

United  States  Cartridge  Co 2  Bann.  &  Ard 253 

Union  Paper  Bag  Machine  Co.  v. 

Binney 5  Fisher 453,  465,  467,  470 

Union  Paper  Bag  Machine  Co.  v. 

Crane 1  Bann.  &  Ard 92,  222,  231 

Union  Paper  Bag  Machine  Co.  v. 

Newell 11  Blatch 401,  452,  474 

Union  Paper  Collar  Co.  v.  Leland. . .  .1  Bann.  &  Ard 28 

Union  Stone  Co.  v .  Allen 14  Fed.  Rep 246 

Union  Sugar  Refinery  v.  Matthiessen .  2  Fisher 256,  359 

United  Nickel  Co.  v.  Pendleton 15  Fed.  Rep 261 

United  Nickel  Co.  v.  Worthington . .  .13  Fed.  Rep .294,  298 

United  States  v.  Burns 12  Wallace 107 

United  States  v.  Commissioner  of 

Patents 7  Off .  Gaz 92 

United  States  v.  Delespine's  Heirs.  .12  Peters 365 

United  States  v.  Lee 106  U.  S 279,  287,  293 

United  States  v.  Morris 2  Bond 237,  238 

United  States  v.  Reid 12  Howard 213,  342 

United  States  v.  Samperyac Hemstead's  Circuit  Court  Reports.  445 

United  States  v.  Stone 2  Wallace 234 

United  States  Annunciator  Co.  v. 

Sanderson .3  Blatch 353,  463,  469 

United  States  Felting  Co.  v.  Asbes- 
tos Felting  Co 4  Fed.  Rep 336 

United  States  Rifle  and  Cartridge 

Co.  v.  Whitney  Arms  Co 2  Bann.  &  Ard 60 


v  TABLE   OF   CITED   CASES. 

Names  of  Cases.  'Where  reported.  Pages  In  this  book. 

United  States  Stamping  Co.  v.  King  .17  Blatch 181,  465 

United    States     Stamping    Co.    v. 

Jewett 7  Fed.  Kep 196 

Van  Buskirk  v.  Hartford  Fire  In- 
surance Co 14  Connecticut 202 

Van  Hook  v.  Pendleton  1  Blatch 415,  468 

Van  Ostrand  v.  Heed 1  Wendell  (N.  Y.) 205 

Vance  v.  Campbell 1  Black 139,  213,  252,  258,  302, 

342,  348,  383,  417,  427 

Vance  v.  Campbell 1  Fisher 53,  56 

Varick  v.  Briggs 6  Paige  (N.  Y.) 203 

Vattier  v.  Hinde 7  Peters 408,  429 

Vaughan   v.    Central  Pacific   Kail- 
road  Co 3  Bann.  &  Ard 311 

Vaughan   v.  East   Tennessee,  Vir- 
ginia and  Georgia  Railroad  Co. . .  2  Bann.  &  Ard 311 

Vinton  v.  Hamilton 104  U.  S 19 

Vogler  v.  Semple 7  Bissell 260 

Vose  v.  Singer 4  Allen  (Mass.) 214 

Wade  v.  Metcalf 16  Fed.  Rep  107 

Walker  v.  Hawxhurst 5  Blatch 237 

Walker  v.  Rawson 4  Bann.  &  Ard 20 

Wallace  v.  Holmes 9  Blatch 296 

Wallace  v.  Noyes 13  Fed.  Rep 21 

Ward  v.  County  of  Hartford 12  Connecticut 293 

Ward  v.  Plow  Co  14  Fed.  Rep 21 

Washburn  v.  Gould 3  Story  . . .  .142,  180,  199,  208,  372,  374 

Washburn  &  Moen  Mfg.  Co.  v. 

Haish 4  Bann.  &  Ard 240 

Washburn  &  Moen  Mfg.  Co.  v. 

Haish 4  Fed.  Rep 18,  51,  197,  207 

Washing- Machine  Co.  v.  Earle  3  Wallace,  Jr 207 

Washing-Machine  Co.  v.  Tool  Co 20  Wallace 130 

Waterbury  Brass  Co.  v.  Miller 9  Blatch 245,  250,  271 

Waterbury  Brass  Co.  v.  New  York 

Brass  Co 3  Fisher 353,  354,  373 

Waterman  v.  Thomson 2  Fisher 42 

Water-Meter  Co.  v.  Deeper 101  U.  S 253 

Watt  v.  Starke 101  U.  S 438 

Wayne  v.  Winter 6  McLean 360 

Webber  v.  Virginia 103  U.  S 106 

Webster  v.  New  Brunswick  Carpet 

Co 1  Bann.  &  Ard 60,  200 

Webster  Loom  Co.  v.  Higgins 4  Bann.  &  Ard 50 

Welling  v.  Crane 14  Fed.  Rep 22 

Welling  v.  Trimming  Co 2  Bann.  &  Ard 481 


TABLE    OF    CITED    CASES.  y 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Wells v.  Gill.  ..._ 6  Fisher 454,  465,  469 

Werner  r.  King 96  U.  S 255 

West  v.  Barnes. 2  Dallas 382 

Westinghouse  v.  Air-Brake  Co 2  Bann.  &  Arc! 130 

Weston  v.  White 13  Blatch 95,  117 

Wetherill  v.  Zinc  Co 6  Fisher 193,  200,  221 

Wetherill  v.  Zinc  Co. .  .  .1  Bann.  &  Ard 311,  341,  481,  482, 

487,  498 

Wheeler  v.  McCormick .8  Blatch 411,  464 

Wheeler  v.  McCormick 11  Blatch 476 

Wheeler  v.  Reaper  Co 10  Blatch 53,  254 

Whipple  v.  Hutchinson 4  Blatch 481,  482 

Whipple  v.  Mfg.  Co Fisher 353 

Whipple  v.  Miner 15  Fed.  Rep  . .- 87 

White  u.  Heath 10  Fed.  Rep 463 

White  r.  Lee 5  Bann.  &  Ard 223 

Whiter.  Lee 14  Fed.  Rep 23,  222 

WThite  v.  Mfg.  Co 24  Off.  Gaz 138 

Whiteley  v.  Swayne 4  Fisher 161 

Whiting  v.  The  Bank  of  the  United 

States 13  Peters 443,  444 

Whiting  v.  Graves 3  Bann.  &  Ard 196,  197,  214 

Whitney  v.  Howry 3  Fisher 447 

Whitney  v.  Mowry 4  Fisher 56 

Whittemore  v.  Cutter 1  Gallison 394,  398 

Wicke  v.  Kleinknecht 1  Bann.  &  Ard 220 

Wicks  v.  Stevens 2  Bann.  &  Ard 161 

Wickersham's  Case 4  Off.  Gaz 188 

Wilbur  v.  Beecher 2  Blatch 396 

Wilcox  v.  Jackson  13  Peters 475 

Wilcoxen  u.  Bowles 1  Louisiana  An'l 200 

Wilder  v.  Kent 15  Fed.  Rep.r 219 

Wilder  v.  McCormick. 2  Blatch   314,  315,  318,  320 

Wiley  v.  Yale 1  Metcalf  (Mass. ) 308 

Wilkins  v.  Ellett 108  U.  S 289 

Wilkins  v.  Jordan 3  Washington 472 

Williams  v.  Boston  &  Albany  Rail- 
road Co * 4  Bann.  &  Ard 70 

Williams  v.  Empire  Transportation 

Co 3  Bann.  &  Ard    283 

Williams  v.  Leonard 9  Blatch 489 

Willimantic    Linen    Co.   v.    Clark 

Thread  Co 4  Bann.  &  Ard 38 

Wilson  v.  Barnum 8  Howard 449 

Wilson  v.  Chickering 14  Fed.  Rep 291 

Wilson  v.  Coon 18  Blatch 122,  153,  155,  364 

Wilson  v.  Janes. .  .  .3  Blatch. .  ..374 


Ivi  TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  thla  book. 

Wilson  v.  Mfg.  Co 12  Fed.  Rep 237 

Wilson  v.  liousseau 4  Howard 166,  188,  189,  190,  193, 

200,  208,  288,  365 

Wilson  r.  Sandford , 10  Howard 281 

Wilson  v.  School  District 32  New  Hampshire 293 

Wilson  i).  Sherman 1  Blatch 464,  466 

Wilson  v.  Simpson 9  Howard 193 

Wilson  v.  Stolley 4  McLean 218,  219,  408 

Wilson  v.  Turner Taney's  Circuit  Ct.  Decisions . .  188,  189 

Wilson  Packing  Co.  v.  Hunter 4  Bann.  &  Ard 283,  284 

Wilson  Packing  Co.  v.  Provision  Co.  .9  Fed.  Rep 18 

Wilton  v.  Railroad  Co 1  Brightley's  Federal  Digest 56 

Winans  v.  Denmead 15  Howard 30,  132,  133,  250 

Winans  v.  Railroad  Co 21  Howard 134 

Wintermute  v.  Redington , 1  Fisher 211 

Wing  v.  Warren 5  Fisher 178 

Wire  Book  Sewing  Machine  Co.  v. 

Stevenson 11  Fed.  Rep 222,  231 

Wiscott  v.  Agricultural  Works 11  Fed.  Rep 215 

Wise  v.  Allis 9  Wallace 325 

Wisner  v.  Grant 5  Bann.  &  Ard 127,  177 

Wood  v.  Mill  Co 4  Fisher 50 

Wood  v.  Railroad  Co 2  Bissell 193 

Wood  v.  Underbill 5  Howard 124 

Wood  v.  Wells  6  Fisher 223 

Wood-Paper  Patent 23  Wallace  176 

Woodbridge  v.  Perkins 3  Day  (Connecticut) 202 

Woodruff  v.  Barney 2  Fisher 380 

Woodward  v.  Morrison 1  Holmes 208 

Woodworth  v.  Cook 2  Blatch 200,  223 

Woodworth  v.  Curtis 2  Woodbury  &  Minot 193,  194,  218 

Woodworth  v.  Edwards 3  Woodbury  &  Minot 185,  296,  405, 

455,  456 

Woodworth  v.  Hall 1  Woodbury  &  Minot 178,  179,  456 

Woodworth  v.  Rogers 3  Woodbury  &  Minot 473,  474,  482 

Woodworth  v.  Stone 3  Story 179,  180,  463 

Woodworth  v.  Weed 1  Blatch 223,  466 

Wooster  v.  Machine  Co 4  Bann.  <5s  Ard 468 

Wooster  v.  Manufacturing  Co 23  Off.  Gaz 224 

Wooster  v.  Marks 17  Blatch 294 

Wooster  v.  Sidenberg 13  Blatch 193 

Wooster  v.  Simonson 16.  Fed.  Rep 392 

Wooster  v.  Taylor 14  Blatch 487 

Worley  v.  Tobacco  Co 104  U.  S 62,  84 

Wortendyke  v.  White 2  Bann.  &  Ard 219,  467 

Wright  v.  Bales 2  Black 213,  302,  342,  348 

Wright  v.  Dame 22  Pickering  (Mass.) 404 


TABLE   OF    CITED   CASES.  Ivii 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Wright  v.  Kandel 8  Fed.  Hep  201,  203 

Wright  v.  Wilson 11  Richardson  (S.  C.  Law  Hep.)..  205 

Wyeth  v.  Stone 1  Story 66,  70,  143,  245 

Yale    &    Greenleaf    Mfg.    Co.    v. 

North 5  Blatch 477 

York  &  Cumberland  Railroad  Co.  v. 

Myers 18  Howard 382 

York  &  Maryland  Line  Railroad  Co. 

v.  Winans 1 .17  Howard 122,  292,  297,  301 

Young  v.  Lippman 9  Blatch 454,  473 

Yuengling  v.  Johnson 1  Hughes 453,  456 

Zane  v.  Peck 13  Fed.  Rep 388 

Zane  v.  Soffe 5  Bann.  &  Ard 372 

Zinn  u.  Weiss 7  Fed.  Rep 246 


THE  PATENT  LAWS. 


CHAPTER  I. 

THE    SUBJECTS    OF   PATENTS. 


1.  Constitutional  and  statutory  foun- 

dation of  the  patent  laws. 

2.  Constitutional      and      statutory 

meaning  of  the  word  "  dis- 
covery." 

3.  Patent  law  meaning  of  the  word 

"  art." 

4.  Patent  law  meaning  of  the  word 

"process,"  as  illustrated  in 
the  case  of  Corning  v.  Burden. 

5.  Patent  law  meaning  of  the  word 

"process",  as  illustrated  by  the 
case  of  MacKay  v.  Jackman,  and 
by  other  Circuit  Court  cases. 

6.  Patent  law  meaning  of  the  word 

"  process,"  precisely  denned. 

7.  Difference  between  a  patent  for  a 

"process,"  and  a  patent  for  a 
"principle,"  inquired  into. 

8.  Illustrated  by  the  case  of  McClurg 

v.  Kingsland. 

9    Illustrated  by  the  case  of  O'Keilly 
v.  Morse. 


10.  Illustrated  by  the  case  of  Mowry 
v.  Whitney. 

11.  Illustrated  by  the  case  of  Tilgh- 
man  v.  Proctor. 

12.  Illustrated    by  the    four    cases 
when  compared. 

13.  Illustrated    by    the    four   cases 
when  contrasted. 

14.  Deduced  from  the  four  cases  as 
compared  and  contrasted. 

15.  Illustrated  by  the  eighth  claim 
of  Morse. 

16.  Machines,  and  improvements  of 
machines. 

17.  Manufactures. 

18.  Compositions  of  matter. 

19.  Distinction  between  machines, 
manufactures,  and  compositions 
of  matter. 

20.  Designs. 

21.  On  whose  invention  designs  are 
patentable. 

22.  Utility  and  beauty  of  designs. 


§  1.  CONGRESS  has  power  to  promote  the  progress  of  science 
and  useful  arts,  by  securing  for  limited  times  to  inventors, 
the  exclusive  right  to  their  respective  discoveries.1  This 
constitutional  law  is  the  foundation  of  all  the  patent  laws  of 


1  Constitution  of  the  United  States  of  America,  Article  I.,  Section  8. 


2  THE    SUBJECTS    OF    PATENTS.  [CHAP.   I. 

the  United  States.  In  accordance  with  the  power  it  confers, 
and  in  pursuance  of  the  object  it  mentions,  Congress  has, 
from  time  to  time,  enacted  certain  statutes.  The  principal 
enactment,  in  force  at  this  writing,  is  Section  4886  of  the 
Revised  Statutes  of  the  United  States.  Subject  to  ceitain 
conditions  and  limitations,  hereafter  to  be  explained  in  this 
book,  that  section  provides  that  any  person  who  has  invented 
or  discovered  any  new  and  useful  art,  machine,  manufacture, 
or  composition  of  matter,  or  any  new  and  useful  improvement 
thereof,  may  obtain  a  patent  therefor.  Statute  law,  identical 
with  this,  has  been  in  force  in  the  United  States  ever  since 
April  10,  1790  ;  except  that  the  conditions  and  limitations 
attending  it  have  varied  somewhat  from  time  to  time  ;  and 
except  that  compositions  of  matter  were  not  mentioned  in 
the  statute  prior  to  that  of  February  21,  1793,  though  they 
were  doubtless  covered  by  the  word  "  manufacture,"  which 
the  earlier  statute  contained. 

§  2.  The  word  "  discovery"  does  not  have,  either  in  the 
Constitution  or  the  statute,  its  broadest  signification.  It 
means  invention,  in  those  documents,  and  in  them  it  means 
nothing  else.  The  "  discoveries"  of  inventors  are  inventions. 
The  same  man  may  invent  a  machine,  and  may  discover  an 
island  or  a  law  of  nature.  For  doing  the  first  of  these 
things,  the  patent  laws  may  reward  him,  because  he  is  an 
inventor  in  doing  it  ;  but  those  laws  cannot  reward  him  for 
doing  either  of  the  others,  because  he  is  not  an  inventor  in 
doing  either.  The  statute  provides  that  patents  may  be 
granted  for  four  classes  of  things.  These  are  arts,  machines, 
manufactures,  and  compositions  of  matter.  None  of  these 
things  can  be  originally  made  known  by  discovery,  as  our 
continent  was.  They  are  not  found,  but  are  created.  They 
are  results  of  original  thought.  They  are  inventions.  Laws 
of  nature,  on  the  other  hand,  can  never  be  invented  by  man, 
though  they  may  be  discovered  by  him.  "When  discovered, 
they  may  be  utilized  by  means  of  an  art,  a  machine,  a  manu- 
facture, or  a  composition  of  matter.  It  is  the  invention  of 
one  or  more  of  these,  for  the  purpose  of  utilizing  a  law  of 
nature,  and  not  the  discovery  of  that  law,  that  may  be 


CHAP.   I.]  T11E    SUBJECTS    OF    PATENTS.  3 

rewarded  with  a  patent.1  These  points  of  law  are  completely 
illustrated  by  the  discoveries  and  inventions  which  pertain  to 
the  telegraph. 

Stephen  Gray,  in  1729,  discovered  the  electric  current,  and 
discovered  that  some  substances  are  conductors,  while  other 
substances  are  non-conductors  of  that  current  ;  but  he  did  not 
live  to  see  those  laws  of  nature  utilized  in  any  way.  Other 
discoveries,  relevant  to  electricity,  were  made  later  in  the 
eighteenth  century,  by  Franklin,  by  Galvani,  and  by  Volta. 
The  researches  of  (Ersted,  Ampere,  and  Arago,  about  the  year 
1820,  disclosed  the  fact  that  a  current  of  electricity,  passing 
through  an  insulated  wire,  will  magnetize  a  piece  of  soft  iron 
around  which  any  part  of  that  wire  is  coiled  ;  and  the  further 
fact,  that  when  that  current  is  broken,  the  magnetism  of  that 
iron  instantly  expires.  This  was  the  crowning  discovery  that 
made  the  electro-magnetic  telegraph  a  possibility.  Professor 
Morse,  the  inventor  of  that  telegraph,  had  no  share  in  making 
that  discovery,  nor  in  making  either  of  those  which  preceded 
it.  He  was  not  a  scientist.  His  profession  pertained  to  the 
fine  arts,  and  not  to  those  commonly  called  useful.  Being, 
however,  a  gentleman  of  reading,  he  was  somewhat  conversant 
with  the  principal  known  laws  of  electricity  and  electro-mag- 
netism, and  when  he  found  his  knowledge  deficient  he  resorted 
to  those  still  better  informed  than  himself.  During  an  ocean 
voyage  in  1832  he  conceived  the  invention,  which  he  completed 
in  1837,  patented  in  1840,  and  embodied  in  1844  in  a  work- 
ing telegraph  from  Washington  to  Baltimore.  Morse  was  as 
justly  entitled  to  a  patent  for  that  invention  as  he  would  have 
been  had  he  been  the  discoverer  of  all  the  laws  of  nature 
which  it  utilized.  On  the  other  hand,  Stephen  Gray,  had  he 
lived  in  the  time  and  in  the  country  of  Morse,  would  not  have 
been  entitled  to  a  patent  for  his  discovery,  splendid  as  it  was, 
because  what  he  made  known  was  neither  an  art,  a  machine, 
a  manufacture,  nor  a  composition  of  matter  ;  and  because,  to 
have  given  him  an  exclusive  right  to  the  electric  current 

1  O'Reilly  v.  Morse,  15  Howard,  112,1853;  Morton  v.  Infirmary,  5  Blatch. 
11C,  1862. 


4  THE   SUBJECTS   OF   PATENTS.  [CHAP.  I. 

would  have  "been  to  discourage  and  not  to  promote  the  prog- 
ress of  science  and  useful  arts.  It  would  have  been  to  pro- 
hibit all  others,  during  the  life  of  that  patent,  from  using  any 
electric  telegraph  or  telephone,  should  any  be  invented.  It 
would  have  been  to  prohibit  man  from  utilizing  one  of  the 
laws  of  God. 

§3.  The  word  "art"  also  has  a  narrower  meaning  in  the 
patent  laws  than  it  has  in  the  dictionaries.  In  the  latter  its  sig- 
nification is,  u  the  use  of  means  to  produce  a  result."  In  the 
patent  laws  it  covers  only  a  certain  limited  meaning  of  the 
word  process.  The  common  meaning  of  this  latter  word  is 
"  an  operation  performed  by  rule  to  produce  a  result."  One 
instance  of  such  a  process  is  the  mixing  of  crude  India  rubber 
with  sulphur,  and  then  subjecting  the  mixture  to  a  high  de- 
gree of  heat,  thereby  producing  a  new  and  useful  composition 
of  matter  :  a  composition  which  will  be  soft  India  rubber  if  the 
proportion  of  the  sulphur  to  the  crude  rubber  is  one  part  to 
five,  and  will  be  hard  India  rubber  if  the  two  ingredients  are 
equal  in  weight.  Another  process  is  the  planing  of  boards  in 
a  planing-machine.  Both  of  these  processes  are  arts  in  the 
dictionary  sense  of  that  word.  The  first  produces  its  result  by 
chemical  action  and  the  action  of  heat.  The  second  produces 
its  result  solely  by  the  action  of  a  machine,  and  on  purely 
mechanical  principles.  Because  of  this  difference,  the  first  is 
a  patentable  process,  while  the  second  is  not.  This  distinction 
was  announced  and  applied  by  the  Supreme  Court  thirty  years 
ago,  and  has  recently  been  enforced  by  Judge  WHEELER,  and 
recognized  by  Judges  WALLACE,  BLODGETT,  and  LOWELL. 

§  4.  In  Coming  v.  Burden  '  it  appears  that  Henry  Burden 
obtained  a  patent,  in  the  specification  of  which  he  stated  that 
he  had  invented  an  "  improvement  in  the  process  of  manufact- 
uring iron,"  and  described  two  machines,  both  of  them  con- 
trived by  him,  and  either  of  them  capable  of  producing  upon 
puddler's  balls  the  effect  contemplated,  whenever  such  balls 
were  caused  to  pass  through  such  machine.  That  effect  was 
the  compacting  of  the  balls  by  pressure  into  the  form  of 

1  Corning  u.  Burden,  15  Howard,  267.  1853. 


CHAr.   I.]  THE    SUBJECTS    OF    PATENTS.  5 

blooms.  Burden  was  tlie  first  to  do  that  by  machinery,  though 
it  had  long  been  done  by  hand.  The  court  below  instructed 
the  jury,  in  substance,  that  the  patent  was  for  the  process  of 
converting  puddler's  balls  into  blooms,  by  continuous  pressure 
and  rotation  of  the  balls  between  converging  surfaces,  and 
that  any  machine  which  would  perform  that  work  by  that 
process  would  infringe  that  patent.  The  case  turned  in  the 
Supreme  Court  on  the  question  of  the  soundness  of  that  in- 
struction. That  court  decided  that  instruction  to  have  been 
erroneous,  and  therefore  reversed  the  judgment  of  the  court 
below.  As  the  reason  for  its  decision,  the  Supreme  Court  an- 
nounced that  processes  which  consist  only  in  the  use  of  mech- 
anism are  not  patentable,  and  that  all  other  methods  of  pro- 
ducing useful  results  are  patentable  as  processes,  they  being 
such  processes  as  are  covered  by  the  word  "  art"  in  the  statute. 
The  court  supported  the  first  of  these  doctrines  by  showing 
that  a  patent  for  a  process  performed  by  a  machine  would 
really  be  a  patent  for  its  function  or  effect,  and  would  there- 
fore prohibit  the  use  of  subsequent,  different,  and  better 
machines  for  performing  the  same  function  or  producing  the 
same  effect.  Such  a  patent,  if  granted  and  sustained,  would 
bar  all  subsequent  inventions  in  the  same  department  of 
machinery,  until  such  time  as  it  might  expire.  It  would 
therefore  obstruct  the  progress  of  a  useful  art  and,  in  so 
doing,  would  contravene  the  spirit  and  the  purpose  of  the 
Constitution  and  the  statute.  Accordingly  the  court  said,  that 
1  '  it  is  well  settled  that  a  man  cannot  have  a  patent  for  the 
function  of  a  machine." 

§  5.  In  MacKay  v.  Jackman  '  it  appears  that  the  patentee 
invented  a  machine  for  sewing  together  the  soles  and  uppers  of 
all  kinds  of  boots  and  shoes,  and  obtained  a  patent  for  that 
machine  in  July,  1858,  and  obtained  a  patent  for  the  process 
of  using  that  machine  in  August,  1860.  Suits  were  brought 
against  Jackman  and  others  for  using  specimens  of  that 
machine  after  the  expiration  of  the  machine  patent,  but  before 
the  expiration  of  the  patent  for  the  process.  Judge  WIIEELEB, 

1  MacKay  v.  Jackman,  12  Fed.  Rep.  615,  1882. 


6  THE    SUBJECTS    OF   PATENTS.  [CHAP.  I. 

however,  dismissed  the  bills,  and  cited  Corning  v.  Burden  to 
support  his  opinion,  that  a  patent  for  a  process  of  using  a 
machine  is  void.  To  have  held  the  contrary  would  have 
enabled  the  patentee  to  possess  a  monopoly  of  his  invention 
for  more  than  twenty-three  years  instead  of  for  twenty-one. 

In  New  v.  Warren '  the  bill  was  based  on  a  patent  for  a 
tank  to  hold  asphaltic  cement,  and  on  a  patent  for  the  process 
of  using  that  tank.  Judge  WHEELER  held  the  latter  patent  to 
be  invalid,  saying,  "  For  this  mere  operation  of  the  machine, 
it  does  not  seem  that  there  can  be  a  patent,  in  addition  to  a 
patent  on  the  machine." 

In  Brainard  v.  Gramme*  the  patent  had  two  claims  covering 
a  machine  for  washing  shavings,  and  two  other  claims  for  the 
washing  of  shavings  by  that  machine.  Judge  WALLACE  held 
the  latter  to  be  entirely  inoperative,  and  indeed  the  com- 
plainant himself  seems  to  have  arrived  at  a  knowledge  of  the 
law  on  that  point,  for  he  voluntarily  proposed  to  file  a  dis- 
claimer as  to  the  alleged  process. 

In  Goss  v.  Cameron*  the  patent  purported  to  cover  a 
method  of  using  a  printing-press,  but  Judge  BLODGETT  held 
that  such  a  claim,  if  literally  construed,  would  be  void,  and  that, 
in  order  to  stand,  it  must  be  construed  to  cover  the  particular 
mechanism  described,  and  not  to  cover  any  process  of  using 
anything. 

In  Hatch  v.  Moffitt 4  the  complainant  sued  on  a  patent  which 
covered  a  machine  for  crimping  heel  stiffenings  of  boots  and 
shoes.  Among  the  claims  of  that  patent  was  one  for  the 
process  of  using  that  machine.  Judge  LOWELL  held  that  claim 
to  be  void,  because  it  purported  to  cover  the  mode  of  operat- 
ing the  machine,  and  not  to  cover  any  particular  mechanism. 

§  6.  In  pursuance  of  the  rule  established  in  Corning  v.  Bur- 
den, and  followed  in  the  several  later  cases  explained  in  the  last 
section,  the  word  "  process"  will  not  hereafter  in  this  book  be 


1  New  v.  Warren,  22  Off.  Gaz.  587,  *  Goss  v.  Cameron,  14  Fed.  Rep. 

1882.  676,  1882. 

*  Brainard  v.  Cramme,  12  Fed.  4  Hatch  v.  Moffitt,  15  Fed.  Bep. 

Hop.  621,  1882.  253,  1883. 


CHAP.  I.]  THE    SUBJECTS    OF   PATENTS.  7 

used  in  its  generic  sense  of  "an  operation  performed  by  rule 
to  produce  a  result,' '  but  it  will  be  used  only  in  its  narrower 
patent-law  meaning  of  an  operation  performed  by  rule,  to 
produce  a  result,  by  means  not  solely  mechanical.  All  proc- 
esses which  come  within  this  definition  are  patentable,  pro- 
vided they  are  products  of  invention,  and  are  new  and  useful. 
That  all  processes,  and  all  machines,  manufactures,  and  com- 
positions of  matter,  must  possess  those  three  requisites  in  order 
to  be  proper  subjects  of  patents,  will  be  explained  at  large  in 
the  next  three  chapters  of  this  book. 

§  7.  It  was  shown  in  Section  2  that  the  discovery  of  a  law  of 
nature  is  not  patentable.  That  which  was  so  denominated  in 
that  section  is  often  spoken  of  as  a  "  principle,"  and  at  other 
times  as  a  "scientific  principle,"  and  again  as  a  "scientific 
fact,"  and  still  again  as  a  "fact  in  nature."  By  whatever 
name  it  is  called,  it  is  certain  that  the  thing  referred  to  is  not  a 
material  substance.  It  is  not  to  be  apprehended  by  the  sense 
of  touch,  but  when  discovered  finds  a  lodgment  in  the  mind 
as  a  mental  conception  only.  So  also,  a  process  is  not  a  sub- 
stance which  can  be  handled.  It  is  seen  only  by  noting  its 
constituent  acts  as  they  are  being  performed.  Principles  and 
processes  are  therefore  alike  in  that  they  are  intangible,  and 
being  so,  they  have  sometimes  been  mistaken  for  each  other. 

Whether  a  given  patent  is  one  for  a  process  or  one  for  a 
principle,  is  a  question  upon  which  its  validity  may  wholly 
depend.  It  is  therefore  important  to  ascertain  what  rule  gov- 
erns the  decision  of  such  questions  :  to  ascertain  precisely 
wherein  consists  the  difference  between  a  patent  for  a  princi- 
ple and  a  patent  for  a  process.  Any  search  for  that  distinc^ 
tion  made  during  the  first  half  of  this  century  was  necessarily 
a  speculative  one,  for  lack  of  authoritative  adjudged  case& 
from  which  to  reason.  Now,  however,  when  engaged  in  an 
investigation  of  the  point,  we  have  recourse  to  four  very  in- 
structive Supreme  Court  decisions.  The  proper  method  of 
conducting  the  inquiry  seems  to  be,  to  first  set  down  the  im- 
portant relevant  points  of  each  of  those  cases,  and  then  to  as- 
certain what  doctrine  is  consistent  with  them  all.  Such  hy- 
pothetical rules  as  are  found  to  be  inconsistent  with  either  of 


8  THE    SUBJECTS    OF    PATENTS.  [CHAP.    I. 

the  cases  may  safely  be  rejected  as  not  true  rules  ;  but  if  some 
one  proposition  is  found  to  logically  underlie  all  four  decisions, 
it  is  safe  to  believe  that  the  Supreme  Court  will  never  depart 
from  it. 

§  8.  In  McClurg  v.  Kingsland '  it  appears  that  some  method 
was  long  sought,  by  means  of  which  rollers  or  cylinders  could 
be  so  cast  that  the  metal,  when  introduced  into  the  moulds, 
would  be  given  a  rotary  motion,  to  the  end  of  throwing  the 
flog  or  dross  into  the  centre  instead  of  the  circumference  of 
the  casting.  The  fact  that  rotary  motion  would  so  result  was 
an  understood  law  of  nature,  an  understood  operation  of  cen- 
trifugal force.  The  problem  was  to  produce  such  a  motion 
more  conveniently  and  more  uniformly  than  by  stirring  the 
liquid  metal  with  a  circular  movement  of  an  implement  in- 
serted therein.  That  problem  was  solved  in  1834  by  James 
Harley,  a  workman  in  a  foundry  in  Pittsburg,  Pennsylvania. 
He  discovered  that  the  rotary  motion  desired  could  be  im- 
parted to  melted  metal  by  injecting  that  metal  into  a  mould 
diagonally  instead  of  perpendicularly  or  horizontally.  A 
patent  was  granted  to  him  in  1835,  for  "  an  improvement  in 
the  mode  of  casting  chilled  rollers  and  other  metallic  cylinders 
and  cones."  Litigation  arose  on  the  patent,  and  corning 
before  the  Supreme  Court  it  was  held  to  be  a  patent  for  a 
process. 

§  9.  In  O'Reilly  v.  Morse s  it  appears,  as  also  it  appears  in  Sec- 
tion 2  of  this  book,  that  Professor  Morse  was  not  the  discoverer 
of  either  of  the  laws  of  nature  which  lie  utilized  in  his  tele- 
graph. He  did,  however,  invent  a  machine  by  means  of 
which  those  laws  could  be  made  to  carry  information  to  a  dis- 
tant place.  That  machine  was  dependent  for  success  on  sev- 
eral laws  of  nature,  and  lacking  any  one  of  them  it  would 
have  failed  of  its  result.  The  chief  of  these  was  the  electric 
current  discovered  by  Gray.  The  one  next  in  importance  was 
that  discovered  by  (Ersted  and  his  contemporaries,  and  known 
in  natural  philosophy  as  electro-magnetism.  The  eighth 

1  McClurg  v.  Kingsland,   1  How-  s  O'Reilly  v.  Morse,  15  Howard, 

ard,  202.  1843.  112,  1853. 


CHAP.   I.]  THE    SUBJECTS   OF    PATENTS.  9 

claim  of  Morse's  patent  was  substantially  one  for  the  use  of 
the  electric  current,  for  marking  intelligible  signs  at  any  dis- 
tances. The  Supreme  Court  held  that  claim  to  be  void. 

§  10.  In  Mo  wry  v.  Whitney,1  the  following  matters  are  set 
forth.  It  had  long  been  known  that  sudden  cooling  of  very 
hot  iron  makes  it  hard,  but  brittle.  This  process  is  generally 
called  tempering,  and  the  resulting  condition  is  called  temper. 
On  the  other  hand,  the  slow  cooling  of  very  hot  iron  was 
known  to  make  it  soft,  but  tough.  This  is  annealing.  Cast- 
iron  car-wheels  require  tempered  peripheries  and  annealed 
hubs  and  plates,  because  the  first  have  to  endure  friction  and 
the  last  two  have  to  endure  strain.  The  early  attempts  to 
subject  car-wheels  to  both  tempering  and  annealing  produced 
a  weak  and  worthless  article,  resulting  from  the  law  of  the  ex- 
pansion and  contraction  of  metals.  The  peripheries  of  the 
wheels  were  tempered  by  chilling  them,  this  chilling  consist- 
ing in  surrounding  the  moulds  in  which  the  wheels  were  cast 
with  a  circle  of  iron,  and  with  only  a  thin  film  of  sand  be- 
tween it  and  the  peripheries  of  the  wheels.  This  iron  band 
being  a  rapid  conductor  of  heat  caused  the  peripheries  of  the 
wheels  to  suddenly  cool,  and  thus  be  tempered,  while  the 
plates  and  hubs,  being  inclosed  in  a  thick  mass  of  sand,  cooled 
very  slowly,  and  were  thus  annealed.  The  sudden  cooling  of 
the  rims  of  the  wheels,  however,  materially  contracted  their 
circumference,  and  that  contraction  forced  the  still  hot  plates 
to  contract  their  diameter.  Then,  when  the  plates  came  to 
cool  down,  they  themselves  contracted  still  more,  and  thus 
tended  to,  break  away  from  the  rims,  which,  having  entirely 
cooled  some  time  before,  had  no  more  contracting  to  do. 
Wheels  so  made  were  therefore  weak. 

In  this  condition  of  affairs,  Asa  Whitney,  of  Philadelphia, 
discovered  in  1848  that  temper  once  given  to  iron  will  not  be 
destroyed  nor  seriously  impaired  by  the  immediate  reheating  of 
the  iron  and  its  subsequent  very  slow  cooling,  and  he  also 
conceived  a  process  by  means  of  which  that  law  of  nature 
could  be  utilized  to  obviate  the  evil  explained  in  the  last  para- 

»  Mowry  v.  Whitney,  14  Wallace,  620,  1871. 


10  THE    SUBJECTS    OF    PATENTS.  [CHAP.  I. 

graph.  That  process  consisted  in  taking  the  wheels  from  the 
moulds  very  soon  after  their  rims  were  chilled,  and  in  putting 
them  immediately  into  a  chamber  or  furnace  which  had  pre- 
viously been  heated  about  as  hot  as  the  then  heat  of  the 
wheels,  and  thereupon  in  gradually  raising  the  temperature  of 
all  parts  of  the  interior  of  the  chamber  or  furnace  and  its  con- 
tents to  an  equally  high  point,  and  finally  in  causing  all  parts 
of  the  wheels  to  cool  with  equal  slowness.  In  accordance  with 
the  law  of  nature  discovered  by  Whitney,  it  turned  out  that 
the  third  stage  of  this  process  did  not  destroy  nor  seriously 
impair  the  temper  of  the  peripheries  of  the  wheels  which  were 
subjected  to  it.  It  did,  however,  cause  the  peripheries  of  the 
wheels  to  re-expand  in  circumference,  and  in  so  doing  to 
stretch  the  still  hot  and  ductile  plates  back  to  nearly  the  same 
diameter  as  that  they  had  before  the  rims  were  contracted  by 
the  chill.  The  fourth  stage  of  the  process  then  served  to  con- 
tract all  parts  of  the  wheels  harmoniously,  and  the  result  of 
the  whole  process  was  to  remedy  the  evil  at  which  it  was 
aimed.  Mr.  Whitney  obtained  a  patent  for  his  invention,  and 
the  Supreme  Court  held  it  to  be  a  patent  for  a  process,  and 
held  it  to  be  valid. 

§  11.  The  case  of  TiJghman  v.  Proctor,1  discloses  the  follow- 
ing facts  :  A  French  chemist,  named  Chevreul,  discovered  in 
1813  that  fat  is  a  regular  chemical  compound,  consisting  of 
glycerine  and  three  kinds  of  fat  acids.  He  also  discovered 
that  fat  can  be  separated  into  those,  its  constituent  elements, 
by  causing  them  to  severally  unite  with  an  atomic  equivalent 
of  water.  In  1853,  Richard  A.  Tilghman,  a  Philadelphia 
chemist,  discovered  that  those  elements  of  fat  can  be  caused 
BO  to  unite  with  an  atomic  equivalent  of  water  by  mixing  the 
fat  with  water,  and  by  thereupon  subjecting  the  mixture  to  a 
high  degree  of  heat,  and  to  such  a  degree  of  pressure  as  will 
prevent  the  conversion  of  the  water  into  steam.  In  1854 
Mr.  Tilghman  obtained  a  patent,  in  the  specification  of  which 
he  announced  his  discovery,  and  described  a  suitable  appara- 
tus in  which  to  utilize  that  discovery  in  connection  with  the 

1  Tilghman  u.  Proctor,  102  U.  S.  707,  1880. 


CHAP.   I.]  THE    SUBJECTS    OF   PATENTS.  11 

discoveries  of  Chevreul,  and  claimed  "  the  manufacturing  of 
fat  acids  and  glycerine  from  fatty  bodies,  by  the  action  of 
water  at  a  high  temperature  and  pressure."  The  Supreme 
Court  held  that  patent  to  be  one  for  a  process,  and  to  be 
valid. 

§  12.  The  last  four  sections  present  four  cases,  covering  four 
subject-matters  of  claim,  three  of  which  the  Supreme  Court 
held  to  be  patentable  processes,  and  one  of  which  that  tribunal 
held  to  be  an  unpatentable  principle,  or  law  of  nature.  To 
learn  the  controlling  distinction  between  a  claim  for  a  process 
and  a  claim  for  a  principle,  it  is  therefore  sufficient  to  ascer- 
tain precisely  wherein  consists  the  controlling  difference  be- 
tween the  eighth  claim  of  Morse,  on  the  one  hand,  and  the 
claims  of  Harley,  Whitney,  and  Tilghman  on  the  other. 

That  difference  does  not  consist  in  the  fact  that  Ilarley, 
"Whitney,  and  Tilghman  each  discovered  one  of  the  laws  of 
nature  which  he  utilized,  while  the  laws  which  Morse  utilized 
were  discovered  by  others  ;  because  the  Supreme  Court  did 
not  rest  its  decision  in  the  Morse  case  on  the  ground  that  he 
was  not  the  discoverer  of  the  electric  current,  but  on  the 
ground  that,  being  a  power  in  nature,  it  was  not  patentable  to 
any  person.  N either  does  that  difference  consist  in  anything 
outside  of  the  use  of  laws  of  nature,  because  all  four  claims 
were  confined  to  accomplishing  results  by  means  of  such  law 
or  laws,  regardless  of  the  particular  apparatus  used  in  the  re- 
spective processes.  The  fact  that  diagonal  injection  of  melted 
metal  into  a  cylindrical  mould  will  give  that  metal  a  rotary 
motion  ;  the  fact  that  moderate  reheating  of  a  car-wheel  will 
not  destroy  its  chill ;  the  fact  that  very  hot  water  will  separate 
the  elements  of  fat  ;  every  one  of  these  is  just  as  truly  a  law 
of  nature,  just  as  truly  a  "  principle,"  as  is  the  fact  of  the 
electric  current.  Nor  was  the  apparatus  described  by  Ilarley, 
Whitney,  and  Tilghman,  respectively,  for  the  purpose  of 
utilizing  the  first  three  of  these  laws,  respectively,  claimed  as 
any  part  of  their  respective  inventions,  any  more  than  the 
telegraph  described  by  Morse  was  made  a  part  of  the  subject- 
matter  of  his  eighth  claim. 

§  13.  There  is  only  one  radical  distinction  between  the  claims 


12  THE   SUBJECTS   OF   PATENTS.  [CHAP.   I. 

of  the  three  patents  of  Harley,  "Whitney,  and  Tilghman,  on  the 
one  hand,  and  the  eighth  claim  of  Morse  on  the  other.  That 
distinction  is  as  follows.  Harley,  Whitney,  and  Tilghman 
each  produced  a  process  which  utilized  several  laws  of  nature, 
and  each  of  them  claimed  the  entire  process  he  produced,  in- 
cluding the  use  of  all  those  laws  in  the  order  and  method  de- 
scribed. Morse  also  made  an  invention  which  utilized  several 
laws  of  nature,  but  instead  of  claiming  his  combined  and 
methodical  use  of  all  those  laws,  he  confined  his  eighth  claim 
to  one  of  them  alone.  This  difference,  taken  in  connection 
with  the  fact  that  the  Supreme  Court  sustained  the  patents  of 
Harley,  "Whitney,  and  Tilghman,  and  overthrew  the  eighth 
claim  of  Morse,  and  taken  in  connection  with  the  fact  that  no 
other  relevant  and  important  difference  can  be  detected,  points 
to  the  soundness  of  the  doctrines  stated  in  the  next  section, 
and  illustrated  in  the  section  following  that. 

§  14.  A  patent  for  a  process  is  a  patent  for  the  described  com- 
bined use  of  all  the  laws  of  nature  utilized  by  that  process. 
A  patent  for  a  principle  is  a  patent  for  one  only  of  the  laws 
of  nature  used  in  a  process.  If  a  patent  for  a  principle  were 
granted  and  sustained,  it  would  be  much  broader  than  a  patent 
for  a  process,  because  it  would  cover  all  processes  which  aim 
at  the  same  result,  and  which  use  the  particular  law  of  nature 
covered  by  the  patent  for  a  principle,  no  matter  in  what  com- 
bination with  other  Jaws.  A  patent  for  a  process,  on  the  other 
hand,  covers  only  its  own  method  of  using  all  of  the  laws  of 
nature  which  it  utilizes.  To  grant  and  sustain  a  patent  for  a 
principle,  would  induce  an  inventor  to  guess  which  of  the  laws 
of  nature  used  in  his  process  will  always  be  found  indispensa- 
ble, and  guessing  rightly,  would  enable  him,  by  claiming  that 
particular  law,  to  suppress  all  subsequent  processes  using  it :  to 
suppress  all  subsequent  invention  in  the  same  field  until  such 
time  as  his  patent  might  expire.  A  patent  for  a  process,  on 
the  contrary,  leaves  the  field  open  to  ingenious  men  to  invent 
and  to  use  other  processes  using  part  of  the  laws  used  by  the 
patented  process,  or  using  all  of  them  in  other  combinations 
and  methods. 

§  15.  An  illustration  of  the  doctrines  of  the  last  section  exists 


CHAP.   I.]  THE   SUBJECTS    OF   PATENTS.  13 

in  the  matter  of  the  eighth  claim  of  Morse,  when  considered  in 
connection  with  other  telegraphs  than  his.  The  subject  of 
that  claim  was  the  use  of  the  electric  current  for  marking  signs 
at  any  distances.  Professor  Morse  stated  in  that  claim,  that  he 
called  the  electric  current  "  electro-magnetism."  That  was  a 
misnomer.  The  electric  current  is  one  thing,  and  electro-mag- 
netism is  another.  The  first  was  discovered  by  Gray  in  1729, 
but  the  existence  of  the  latter  was  not  known  till  ninety-one 
years  later.  Morse  used  both  in  his  telegraph,  but  his  eighth 
claim  covered  the  electric  current  without  the  other.  But 
without  electro-magnetism  Morse's  telegraph  would  not  work. 
After  Morse  came  Bain,  who  invented  a  telegraph  which  used 
the  electric  current,  but  did  not  use  electro-magnetism.  Its 
recording  apparatus  operated  on  chemical  principles,  and  not 
magnetically  like  that  of  Morse.  Bain's  telegraph  could  work 
with  a  much  feebler  current  than  could  that  of  Morse,  and 
therefore  the  relay  batteries  of  the  latter  were  not  wanted. 
The  two  telegraphs  had  nothing  in  common  except  that  both 
used  the  electric  current.  If  the  eighth  claim  of  Morse  had 
been  sustained,  it  would  have  covered  Bain's  and  every  other 
electric  telegraph.  On  the  other  hand,  had  that  claim  been  so 
drawn  as  to  cover  the  combined  use  of  all  the  laws  of  nature 
utilized  by  the  telegraph  of  Morse,  when  used  as  he  used 
them,  then  it  would  have  been  a  claim  for  a  process,  and  not 
being  obnoxious  to  either  of  the  weighty  objections  which 
are  set  forth  in  the  opinion  of  the  Supreme  Court,  it  would 
doubtless  have  been  sustained  by  that  tribunal.  In  that  case, 
however,  it  would  not  have  been  infringed  by  the  telegraph 
of  Bain,  nor  by  any  other  which,  like  his,  dispensed  with  one 
or  more  of  the  laws  of  nature  necessary  to  the  telegraph  of 
Morse. 

§  16.  Machines  and  improvements  of  machines  constitute 
the  subject-matter  of  a  majority  of  the  American  patents  here- 
tofore granted.  A  machine  is  a  combination  of  moving 
mechanical  parts,  adapted  to  receive  motion,  and  to  apply  it 
to  the  production  of  some  mechanical  result  or  results.  An 
improvement  of  a  machine  may  consist  in  an  addition  thereto, 
or  in  a  subtraction  therefrom,  or  in  substituting  for  one  or 


14  THE   SUBJECTS   OF   PATENTS.  [ciIAP.   I. 

more  of  its  parts  something  different,  or  in  so  rearranging  its 
parts  as  to  make  it  work  better  than  before.  Whether  or  not 
a  given  improvement  is  a  patentable  one  will  always  depend 
upon  several  considerations.  In  order  to  be  so  it  must,  first  of 
all,  be  an  invented  improvement,  as  distinguished  from  one 
which  is  the  product  of  mere  mechanical  skill  in  construction. 
This  point  of  law  is  explained  at  large  in  the  next  chapter. 
So  also  it  is  explained  in  the  chapter  on  infringement  what 
improvements  can  be  used,  and  what  improvements  cannot  be 
used,  without  infringing  the  patents  for  the  machines  im- 
proved upon,  if  the  latter  happen  to  be  patented.  It  is  enough 
to  say  in  this  chapter  that  an  improvement  may  or  may  not  be 
an  invention,  and  in  either  case  may  or  may  not  be  an  in- 
fringement of  a  patent  covering  the  machine  improved. 

§  17.  The  word  "  manufacture"  has  a  much  narrower  signifi- 
cation in  the  American  patent  laws  than  it  has  in  those  of  Eng- 
land. In  the  latter  it  includes  everything  made  by  the  hand 
of  man,  and  also  includes  processes  of  manufacture.  Accord- 
ing to  the  former,  processes  are  patentable  because  they  are 
arts,  while  some  of  the  things  made  by  the  hand  of  man  are 
patentable  as  machines,  and  some  others  are  patentable  as 
compositions  of  matter,  and  some  others  are  patentable  as  de- 
signs. Whatever  is  made  by  the  hand  of  man,  and  is  neither 
of  these,  is  a  manufacture,  in  the  sense  in  which  that  word  is 
used  in  the  American  patent  laws.  The  term  should  be  held 
to  justify  a  patent  for  the  invention  of  a  new  and  useful  human 
habitation,  or  a  new  and  useful  improvement  of  such  a  struct- 
ure. This  statement  is  ventured,  notwithstanding  the  face- 
tious obiter  dictum  of  Justice  GKIER  in  the  jail  case.1 

§  18.  The  phrase  "  composition  of  matter,"  as  used  in  the 
statutes,  covers  all  compositions  of  two  or  more  substances.  It 
includes,  therefore,  all  composite  articles,  whether  they  be  the 
result  of  chemical  union,  or  of  mechanical  mixture,  and 
whether  they  be  fluids,  powders,  or  solids.  To  be  a  proper 
subject  of  a  patent,  a  composition  of  matter  must,  like  a  proc- 
ess, a  machine,  or  a  manufacture,  be  able  to  endure  the  rele- 

1  Jacobs  v.  Baker,  7  Wallace,  297,  1868. 


C I  TAT.   I.]  THE    SUBJECTS   OF    PATENTS.  15 

vant  tests  of  invention,  novelty,  and  utility,  which  are  stated 
in  the  next  three  chapters  of  this  book. 

§  19,  The  distinction  between  a  machine  and  a  manufacture 
cannot  be  so  stated  that  its  application  to  every  case  would  be 
clear  and  satisfactory  to  every  mind.  The  same  remark  is 
true  of  the  distinction  between  manufactures  and  compositions 
of  matter.  In  most  instances,  however,  when  something  is 
invented  by  the  mind  and  constructed  by  the  hand  of  man,  its 
classification  under  some  one  of  these  heads  is  sufficiently  ob- 
vious. If  an  inventor  is  certain  that  his  invention  belongs  to 
one  or  another  of  the  three  classes  of  things,  but  is  uncertain 
as  to  which,  no  evil  need  result  from  the  doubt.  No  inventor 
needs  to  state  or  to  know  whether  the  thing  he  has  produced 
is  a  machine,  a  manufacture,  or  a  composition  of  matter,  pro- 
vided he  knows  that  it  is  one  or  the  other  of  these.  Seven- 
teen-year patents  may  be  lawfully  granted  for  a  thing  which 
falls  under  either  designation,  but  it  never  becomes  vitally  im- 
portant to  determine  to  which  one  of  the  three  classes  a  par- 
ticular thing  really  belongs. 

§  20.  Designs  are  patentable  under  Section  4929  of  the  Re- 
vised Statutes.  That  section  provides  that  any  person  who,  by 
his  own  industry,  genius,  efforts,  and  expense,  has  invented 
and  produced  any  new  and  original  design  for  a  manufacture, 
bust,  statue,  alto-relievo,  or  bas-relief,  any  new  and  original 
design  for  the  printing  of  woollen,  silk,  cotton  or  other  fabrics, 
any  new  and  original  impression,  ornament,  patent,  print,  or 
picture  to  be  printed,  painted,  cast  or  otherwise  placed  on  or 
worked  into  any  article  of  manufacture,  or  any  new,  useful, 
and  original  shape  or  configuration  of  any  article  of  manufact- 
ure, may,  subject  to  certain  conditions  and  limitations  stated 
in  the  statute,  obtain  a  patent  therefor.  That  section  is  al- 
most a  literal  transcript  of  Section  71  of  the  consolidated  Pat- 
ent Act  of  1870, '  except  that  in  the  latter  the  word  "  pat- 
tern" is  found  in  the  connection  in  which  the  word  "  patent" 
is  printed  in  Section  4929.  The  change  from  "  pattern"  to 
"patent"  was  doubtless  an  error  of  the  printers  of  the  lie- 

1  1G  Statutes  at  Large,  ch.  230,  p.  209. 


16  THE   SUBJECTS    OF    PATENTS.  [CHAP.  I. 

vised  Statutes.  Those  statutes  were  enacted  as  printed,  and 
not  as  is  the  custom  with  shorter  edicts,  as  engrossed  in  writ- 
ing. The  word  "  patent"  is  meaningless  in  that  connection, 
and  patterns,  though  not  mentioned  in  the  section,  are  doubt- 
less covered  by  its  other  provisions. 

§21.  In  like  manner  as  Section  4929  of  the  Revised  Statutes 
was  enacted  to  take  the  place  of  Section  71  of  the  Patent  Act 
of  1870,  the  latter  was  passed  to  take  the  place  of  Section  11 
of  the  Patent  Act  of  1861. '  The  Act  of  1870  differed  from 
its  predecessor  mainly  in  conferring  upon  any  person  the 
rights  to  design  patents  which  the  Act  of  1861  gave  only  to 
citizens  and  to  aliens  who,  having  resided  one  year  in  the 
United  States,  had  taken  an  oath  of  intention  to  become  citi- 
zens. Section  11  of  the  Act  of  1861  was  a  modification  of 
Section  3  of  the  Patent  Act  of  184:2,"  which  latter  was  the 
first  American  statute  authorizing  patents  for  designs. 

§22.  Section  4929,  like  all  three  of  its  predecessors,  provided 
for  patents  for  a  certain  class  of  new,  useful,  and  original  de- 
signs, and  for  certain  other  classes  of  new  and  original  designs, 
thus  recognizing  the  fact  that  some  designs  are  useful  as  well 
as  ornamental,  while  others  have  no  utility  except  to  please 
the  eye  of  the  beholder.  It  is  questionable  whether  the  framers 
of  the  constitutional  provision,  relevant  to  encouragement  of 
science  and  useful  arts,  intended  to  provide  for  patents  for  de- 
signs which  are  useful  only  because  they  are  ornamental.  In 
our  age,  however,  beauty  is  generally  believed  to  have  a  utility 
of  its  own,  and  patents  are  therefore  granted  and  sustained 
for  designs  which  are  useful  only  because  they  are  beautiful.8 

1  12  Statutes  at  Large,  ch.  88,  p.  3  Theberath  v.  Trimming  Co.,  15 

248.  Fed.  Rep.  250,  1883. 

» 5  Statutes  at  Large,  ch.  263,  p.  543. 


CHAPTER    H. 

INVENTION. 


23.  Invention  necessary  to  patent- 
ability. 

24.  Many   negative   rules,    but    no 
affirmative  rule,  for  determining 
the  presence  or  absence  of  in- 
vention. 

25.  Mere  mechanical  skill  is  not  in- 
vention. 

26.  Circumstances  indicating  differ- 
ence between  invention  and  me- 
chanical skill. 

27.  Excellence    of  workmanship   is 
not  invention. 

28.  Substitution  of  materials  is  not 
invention. 

29.  Exception  to  the  last  rule. 

30.  Enlargement  is  not  invention. 

31.  Change  of  degree  is  not  inven- 
tion. 

32.  Aggregation  is  not  invention. 

33.  Simultaneousness   of    action    is 
not  necessary  to  invention. 

34.  Duplication  is  not  invention. 

35.  Omission  is  not  generally  inven- 
tion. 

36.  Substitution   of  equivalents    is 
not  invention. 

37.  New  combination,  without  new 


mode  of  operation,  is  not  inven- 
tion. 

38.  Using  old  thing  for  new  purpose 

is  not  invention. 

39.  Cases  to  which  the  last  rule  does 

not  apply. 

40.  Doubts   relevant    to   invention, 

when  otherwise  insoluble,  are 
solved  by  ascertaining  compar- 
ative utility. 

41.  Form. 

42.  Questions  of  invention  are  ques- 
tions of  fact. 

43.  Questions    of   invention    some- 
times investigated  in  the  light  of 
the  state  of  the  art. 

44.  Joint  and  sole  inventions. 

45.  How  made. 

46.  How  distinguished. 

47.  Suggestions  to  an  inventor. 

48.  Information    sought  by  an   in- 
ventor. 

49.  Mechanical  skill  not  necessary  to 
invention. 

50.  Sole  patent  t'o  one  joint  invent- 
or is  void. 

51.  Joint  patent  to  sole  inventor  and 
another  is  void. 


§  23.  IT  has  been  shown  that  the  word  "  discovered,"  in 
Section  4886  of  the  Revised  Statutes,  has  the  meaning  of  the 
word  "  invented."  '  It  follows  that  patents  are  grantable  for 
things  invented,  and  not  for  things  otherwise  produced.  .Nov- 


1  Section  2  of  this  book. 


18  INVENTION.  [CHAP.  n. 

elty  and  utility  must  indeed  characterize  the  subject  of  a  pat- 
ent, but  they  alone  are  not  enough  to  make  anything  patent- 
able  ;  for  the  statute  provides  that  things  to  be  patented  must 
be  invented  things,  as  well  as  new  and  useful  things.  The 
courts  have  therefore  declared  that  not  all  improvement  is  in- 
vention, and  entitled  to  protection  as  such,  but  that,  to  be  thus 
entitled,  a  thing  must  be  the  product  of  some  exercise  of  the 
inventive  faculties.1 

§  24.  The  abstract  rule  stated  in  the  last  section  is  as  cer- 
tainly true  as  it  is  universally  just,  but  its  application  to  par- 
ticular cases  cannot  be  made  without  the  guidance  of  more 
concrete  propositions.  The  ideal  line  which  separates  things 
invented  from  things  otherwise  produced  has  never  been  com- 
pletely defined  nor  described.  There  is  no  affirmative  rule  by 
which  to  detennine  the  presence  or  absence  of  invention  in 
every  case.'  But  there  are  several  negative  rules,  each  of 
which  applies  to  a  large  class  of  cases,  and  all  of  which  are  en- 
tirely authoritative  and  sufficiently  clear.  To  formulate  those 
rules,  and  to  state  their  qualifications  and  exceptions,  and  to 
review  and  explain  the  adjudged  cases  from  which  those  rules, 
qualifications,  and  exceptions  are  deducible,  is  the  scope  of 
several  sections  which  immediately  follow. 

§  25.  It  is  not  invention  to  produce  a  device  or  process 
which  any  skillful  mechanic  or  chemist  would  produce  when- 
ever required. 

The  Corn-Planter  Patent  *  is  the  accepted  name  of  a  case 
which  was  based  on  ten  reissued  patents  for  as  many  different 
features  of  Brown's  corn  planter.  Number  1094  was  a  patent 
for  a  peg  to  prevent  the  rear  part  of  the  machine  from  tipping 
so  much  as  to  dump  the  driver  upon  the  ground.  The 
Supreme  Court  held  that  patent  to  be  void,  for  the  reason 
stated  in  the  rule  which  stands  at  the  head  of  this  section. 

'  Pearce  v.  Mulford,  102  U.  8. 112,       U.  S.  199, 1882  ;  Slawson  v.  Railroad 

1880  ;  Phillips  v.  City  of  Detroit,  3      Co.,  107  U.  8.  649,  1882. 

Bann.  A  Ard.  150,  1877  ;  Washburn  »  Dunbar  v.  Albert  Field  Tack  Co. 

A  Moen  Mfg.  Co.  v.  Haish,  4  Fed.  4  Bann.  &  Ard.  519,  1879. 

Bep.  900,  1880  ;  Wilson  Packing  Co.  *  The    Corn- Planter     Patent,    23 

v.  Provision  Co.  9  Fed.  Rep.  547,  Wallace,  232,  1874. 

1881  ;  Atlantic  Works  v.  Brady,  107 


CHAP.  II.]  INVENTION.  19 

Vinton  v.  Hamilton '  was  a  case  which  arose  out  of  a  patent 
for  a  hole  in  a  cupola  furnace,  the  function  of  that  hole  being 
to  draw  off  the  molten  cinder  which  floated  on  the  top  of  the 
molten  iron  in  the  furnace.  The  Supreme  Court  held  that 
patent  also  to  be  invalid  for  want  of  invention  ;  held,  in  effect, 
that  a  patent  for  a  new  and  useful  hole  is  as  lacking  in  inven- 
tion as  a  patent  for  a  new  and  useful  peg. 

The  Atlantic  "Works  v.  Brady a  was  based  on  a  patent  for  a 
dredging-boat  with  a  screw  in  its  stem,  boats  with  screws  in 
their  sterns  having  previously  been  used  for  dredging  by  run- 
ning them  stern  foremost.  In  holding  that  patent  to  be  void, 
the  Supreme  Court,  speaking  by  Justice  BRADLEY,  delivered  a 
paragraph  of  very  instructive  argument  in  support  of  the  rule 
of  this  section  :  a  paragraph  so  valuable  as  to  call  for  its  ver- 
batim quotation  in  this  text. 

"  The  process  of  development  in  manufactures  creates  a 
constant  demand  for  new  appliances,  which  the  skill  of  ordina- 
ry head  workmen  and  engineers  is  generally  adequate  to  de- 
vise, and  which,  indeed,  are  the  natural  and  proper  outgrowth 
of  such  development.  Each  step  forward  prepares  the  way 
for  the  next,  and  each  is  usually  taken  by  spontaneous  trials 
and  attempts  in  a  hundred  different  places.  To  grant  to 
a  single  party  a  monopoly  of  every  slight  advance  made,  ex- 
cept where  the  exercise  of  invention  somewhat  above  ordinary 
mechanical  or  engineering  skill  is  distinctly  shown,  is  unjust  in 
principle,  and  injurious  in  its  consequences.  The  design  of 
the  patent  laws  is  to  reward  those  who  make  some  substantial 
discovery  or  invention  which  adds  to  our  knowledge  and 
makes  a  step  in  advance  in  the  useful  arts.  Such  inventors 
are  worthy  of  all  favor.  It  is  never  the  object  of  those  laws 
to  grant  a  monopoly  for  every  trifling  device,  every  shadow  of 
a  shade  of  an  idea,  which  would  naturally  and  spontaneously 
occur  to  any  skilled  mechanic  or  operator  in  the  ordinary  prog- 
ress of  manufactures.  Such  an  indiscriminate  creation  of 
exclusive  privileges  tends  rather  to  obstruct  than  to'  stimulate 

1  Vinton   v.  Hamilton,   104  U.  8.  s  Atlantic    Works    v.   Brady,    107 

491,  1881.  U.  8.  199,  1882. 


20  INVENTION.  [CHAP.  H. 

invention.  It  creates  a  class  of  speculative  schemers  who 
make  it  their  business  to  watch  the  advancing  wave  of  im- 
provement, and  gather  its  foam  in  the  form  of  patented 
monopolies,  which  enable  them  to  lay  a  heavy  tax  upon  the 
industry  of  the  country  without  contributing  anything  to  the 
real  advancement  of  the  arts.  It  embarrasses  the  honest  pur- 
suit of  business  with  fears  and  apprehensions  of  concealed 
liens  and  unknown  liabilities  to  lawsuits  and  vexatious  ac- 
countings for  profits  made  in  good  faith." 

Several  Circuit  Court  cases l  may  also  be  consulted  for  illus- 
trations of  the  rule  of  this  section,  but  the  foregoing  authori- 
ties and  arguments  are  so  strong  that  nothing  is  really  re- 
quired to  support  them. 

§  26.  But  if  a  particular  result  was  long  desired  and  some- 
times sought,  but  never  attained,  want  of  invention  cannot  be 
predicated  of  a  device  or  process  which  first  reached  that 
result,  on  the  ground  that  the  simplicity  of  the  means  is  so 
marked  that  many  believe  they  could  readily  have  produced 
it  if  required.  That  is  the  opinion  of  many  relevant  to  some 
real  inventions,  because  solved  problems  often  seem  easy  to 
persons  who  could  never  have  solved  them,  and  true  inven- 
tions sometimes  seem  obvious  to  persons  who  could  never  have 
produced  them.  This  doctrine  does  not  contradict  that  of  the 
last  section.  It  only  teaches  us  that  the  fact  upon  which  the 
doctrine  of  the  last  section  is  predicated  cannot  be  proven  by 
a  posteriori  opinion,  when  that  opinion  is  inconsistent  with  a 
priori  attempts  and  failures. 

In  The  Loom  Co.  v.  Iliggins,"  Justice  BRADLEY  remarked 
that  :  "It  may  be  laid  down  as  a  general  rule,  though  per- 
haps not  an  invariable  one,  that  if  a  new  combination  and  ar- 
rangement of  known  elements  produce  a  new  and  beneficial 
result,  never  attained  before,  it  is  evidence  of  invention." 
The  exception  to  his  rule,  which  Justice  BKADLKY  contem- 

1  Srfow  v.  Taylor,  4  Bann.  <fe  Ard.  1879  ;  National  Mfg.  Co.  v.  Myers, 

5,  1878  ;  Walker  v.  Rawson,  4  Bann.  15  Fed.  Kep.  241,  1883  ;  McMurray 

&  Ard.  130,  1879  ;   King  v.  Froutel,  v.  Miller,  16  Fed.  Kep.  473,  1883. 
4  Bann.  A  Ard.  238,  1879  ;  Lorillard          *  Loom  Co.  v.  Higgins,  105  U.  S. 

v.  Bidgway,  4   Bann.    &  Ard.    565,  591,  1881. 


CHAP.  II.]  INVENTION.  21 

plated,  doubtless  refers  to  cases  tlie  result  wherein  was  neyer 
before  attained  only  because  it  was  never  before  desired.  In 
the  Circuit  Court  cases  which  support  the  doctrine  of  this  sec- 
tion, the  proviso  that  the  thing  or  process  which  the  patentee 
was  the  first  to  produce,  had  been  previously  sought  for  by 
others  in  vain,  is  never  overlooked,  but,  on  the  contrary,  is 
always  treated  as  a  material  element  in  the  proposition.1 

§  27.  It  is  not  invention  to  produce  an  article  which  differs 
from  some  older  thing  only  in  excellence  of  workmanship. 

In  Pickering  v.  McCullough  2  it  appeared  that  certain  prior 
combinations  were  not  capable  of  successful  working  because 
their  mechanical  construction  was  faulty.  The  Supreme 
Court  held  that  those  faults  could  have  been  removed  by  mere 
mechanical  skill,  without  the  exercise  of  the  faculty  of  inven- 
tion, and  that  therefore  those  combinations  constituted  good 
defences  to  the  patent  in  suit. 

In  Buzzell  v.  Fi field 3  Judge  LOWELL  held  a  patent  for  a  cer- 
tain manufacture  which  was  salable  as  an  article  of  commerce, 
to  be  void,  because  of  a  prior  article  similar  to  it,  but  so  rough 
and  unfinished,  that  it  never-  could  have  found  a  sale  in  the 
market.  Similar  circumstances  and  opinions  also  controlled  the 
decision  by  the  same  Judge  in  the  case  of  Hatch  v.  Moffitt.4 

§  28.  It  is  not  invention  to  substitute  superior  for  inferior 
materials,  in  making  one  or  more  or  all  of  the  parts  of  a 
thing.5  • 

In  -each  of  the  three  cases  which  established  this  rule,  the 
decision  was  made  in  spite  of  the  undeniable  superiority  of 
the  new  manufacture  over  those  which  preceded  it.  The 
clay  door-knobs  covered  by  the  first  patent  have  everywhere 
driven  from  use  those  wooden  and  metallic  ones  which  were 
previously  known.  The  improvement  in  the  second  of  the 

1  Terry  Clock  Co.  v.  New  Haven  s  Buzzell  v.  Fifield,  7  Fed.  Kep. 

Clock  Co.  4  Bann.  &  Ard.  121,  1879;  467,  1881.  [252,  1883. 

Wallace  v.  Noyes,  13  Fed.  Rep.  180,  4  Hatch  v.  Moffitt,  15  Fed.  Eep. 

1882  ;  Ward  v.  Plow  Co.  14  'Fed.  s  Hotchkiss  v.  Greenwood,  11 

Eep.  696,  1883.  Howard,  248, 1850  ;  Hicks  v.  Kelsey, 

*  Pickering  v.  McCullough,  104  18  Wallace,  670,  1873  ;  Terhune  v. 

U.  S.  310,  1881.  Phillips,  99  U.  S.  593,  1878. 


22  INVENTION.  [CHAP.  n. 

cited  cases  had  much  merit ;  and  that  involved  in  the  third 
case  was  widely  adopted.  The  three  patents  were,  however, 
all  held  to  be  void  by  the  Supreme  Court,  because,  though 
specifically  new  and  highly  useful,  the  things  covered  by  them 
were  found  not  to  be  invented  things  :  were  held  to  be  only 
the  result  of  judgment  and  skill  in  the  selection  and  adapta- 
tion of  materials,  and  not  the  product  of  the  inventive  faculties 
of  those  who  produced  them. 

There  being  no  invention  in  substituting  superior  for  inferi- 
or materials,  there  is  certainly  none  in  selecting  from  a  num- 
ber of  materials  recommended  by  a  prior  patentee,  that  one 
which  is  best  adapted  to  the  purpose  in  view.1 

§  29.  The  rule  of  the  last  section  is  not  without  exceptions. 
If  the  substitution  involved  a  new  mode  of  construction,  or  if 
it  developed  new  uses  and  properties  of  the  article  made,  it 
may  amount  to  invention.8  So  also,  where  the  excellence  of 
the  material  substituted  could  not  be  known  beforehand,  and 
where  practice  showed  its  superiority  to  consist  not  only  in 
greater  cheapness  and  greater  durability,  but  also  in  more 
efficient  action,  the  substitution  of  a  superior  for  an  inferior 
material  was  held  by  Judge  NATHANIEL  SHIPMAN  to  amount 
to  invention.' 

.  §  80.  It  is  not  invention  to  so  enlarge  and  strengthen  a 
machine  that  it  will  operate  on  larger  materials  than  be- 
fore. 

In  Phillips  v.  Page4  the  patent  covered  the  first  circular 
saw-mill  which  was  adapted  to  sawing  logs.  Its  utility  was 
great,  and  was  unquestioned.  Machines  like  it,  except  that 
they  were  much  smaller  in  every  part,  had  been  used  before 
to  saw  lath  and  other  slender  articles  out  of  small  blocks  of 
wood.  The  Supreme  Court  therefore  held  that  Mr.  Page  did 
not  invent  a  circular  saw-mill,  but  merely  constructed  one,  by 
copying  on  a  larger  scale  the  prior  machine  for  sawing  lath. 

«  Welling  u.  Crane,  14  Fed.  Rep.  "  Dalton  v.  Nelson,  13  Blatch 

671,  1882.  357,  i876- 

*  Smith  v.  Dental  Vulcanite  Co.,  *  Phillips  v.  Page,  24  Howard 

93  U.  S.  496,  1876.  164,  1860. 


CHAP.   II.]  INVENTION.  23 

In  the  case  of  the  Planing  Machine  Co.  v.  Keith  '  the  pat- 
ent covered  the  Woodbury  Planing  Machine,  a  machine  which 
differed  from  the  older  Woodworth  Planing  Machine  in  one 
respect  only.  Woodworth  used  rollers  to  press  the  boards 
against  the  bed  of  the  machine,  whereas  Woodbury  used  press- 
ure bars  for  that  purpose.  The  Supreme  Court  held  the 
Woodbury  patent  to  be  void  because  Alfred  Anson,  of  Nor- 
wich, Connecticut,  had  previously  invented  and  constructed  a 
machine  for  dressing  window-sash,  which  had  pressure  bars 
like  Woodbury,  instead  of  pressure  rollers  like  Woodworth. 
This  decision  was  made  notwithstanding  the  fact  that  the  An- 
son machine  was  too  small  and  too  weak  for  general  planing 
work  upon  boards  and  planks. 

§  31.  It  is  not  invention  to  change  the  degree  of  a  thing,  or 
of  one  feature  of  a  thing. 

In  Glue  Co.  v.  Upton "  the  patent  covered  pulverized  glue 
made  from  flake  glue  by  grinding  it  in  any  suitable  manner. 
It  had  several  points  of  superiority  over  all  former  kinds  of 
glue,  but  the  Supreme  Court  held  that,  not  being  a  product  of 
invention,  the  patent  covering  it  was  void. 

In  Guidet  v.  Brooklyn  3  the  patent  covered  paving-stones  of 
a  certain  shape  and  with  rough  sides.  Paving-stones  of  the 
same  shape,  but  with  sides  less  rough,  had  been  known  before. 
To  make  the  sides  of  the  prior  stones  rougher  was  held  by  the 
Supreme  Court  to  be  a  change  in  degree  only,  and  therefore 
not  patentable. 

In  another  case  *  it  was  held  by  Judge  BLODGETT  that  an  in- 
creased degree  of  ramming  gravel  between  the  "blocks  of 
wooden  pavement  was  not  invention.  In  still  another  case &  it 
was  decided  by  Judge  LOWELL  that  change  of  degree  did  not 
involve  invention,  where  that  change  consisted  in  using  less 
material  in  producing  the  article  before  the  court,  than  had 
previously  been  used  for  that  purpose. 

1  Planing   Machine   Co.  v.  Keith,       552,  1881. 

101  U.  8.  490,  1879.  4  Stow  v.  City  of  Chicago,  3  Bann. 

2  Glue  Co.  v.  Upton,  97  U.  S.  6,       &  Ard.  91,  1877. 

1877.  5  White  v.  Lee,  14  Fed.  Rep.  790, 

3  Guidet   v.   Brooklyn,    105  U.  S.       1882. 


24  INVENTION.  [CHAP.  n. 

§  32.  Aggregation  is  not  invention. 

In  Hailes  v.  Yan  Worrner  '  the  patents  passed  upon  cov- 
ered certain  self-feeding  coal  stoves.  Those  stoves  were  bet- 
ter than  any  which  preceded  them,  because  they  contained 
more  good  things  than  were  ever  before  assembled  in  that 
kind  of  heater.  All  of  the  things  so  assembled  were  old. 
The  superiority  of  the  patented  stoves  arose  from  the  fact  that 
sundry  good  features,  theretofore  scattered  through  several, 
were  in  them  gathered  into  one  such  article  of  manufacture. 
The  things  so  united  did  not,  however, ,  perform  any  joint 
function,  but  each  did  only  what  it  had  formerly  done  in  for- 
mer stoves.  The  Supreme  Court  held  the  whole  to  be  a  mere 
aggregation  of  devices,  and  not  to  be  invention. 

The  case  of  Reckendorfer  v.  Faber  s  was  based  upon  pat- 
ents for  a  new  and  useful  article,  of  which  many  millions  of 
specimens  have  been  made  and  sold  since  those  patents  were 
granted.  That  article  was  a  piece  of  soft  rubber  united  to  one 
end  of  a  lead  pencil.  The  Supreme  Court  called  attention  to 
the  fact  that  there  was  no  joint  operation  peformed  by  the 
pencil  and  the  rubber,  and  therefore  held  the  patent  to  be 
void  for  want  of  invention. 

In  Pickering  v.  McCullough8  the  doctrine  of  this  section 
was  explained  by  Justice  MATTHEWS  with  uncommon  clear- 
ness. Speaking  through  him,  the  Supreme  Court  said  :  "In 
a  patentable  combination  of  old  elements,  all  the  constituents 
must  so  enter  into  it  as  that  each  qualifies  every  other ;  to 
draw  an  illustration  from  another  branch  of  the  law,  they  must 
be  joint  tenants  of  the  domain  of  invention,  seized  each  of 
every  part,  per  my  et  per  tfiut,  and  not  mere  tenants  in  com- 
mon, with  separate  interests  and  estates.  It  must  form  either 
a  new  machine  of  a  distinct  character  and  function,  or  produce 
a  result  due  to  the  joint  and  co-operating  action  of  all  the  ele- 
ments, and  which  is  not  the  mere  adding  together  of  separate 
contributions." 


1  Hailes  v.  Van  Wormer,  20  Wai-       357,  1875. 

lace,  353,  1871.  =»  Pickering    v.    McCullough,    104 

*  Reckendorfer  v.  Faber,  92  U.  S.       U.  S.  310,  1881. 


CHAP.   II.]  INVENTION.  25 

Several  Circuit  Court  cases  have  also  been  decided  which 
illustrate  the  application  of  the  rule  of  this  section  to  a  variety 
of  contrivances  and  aggregations.1 

§  33.  The  rule  of  the  last  section  does  not  state  nor  imply 
that  all  the  parts  of  a  patentable  combination  must  act  at 
the  same  time.  The  fact  on  that  point  is  no  criterion  by 
means  of  which  to  distinguish  invention  from  aggregation. 
Justice  CURTIS,  in  a  Circuit  Court  case,2  stated  the  true  doctrine 
on  this  subject,  and  stated  it  with  marked  lucidity,  saying  : 
"  To  make  a  valid  claim  for  a  combination,  it  is  not  necessary 
that  the  several  elementary  parts  of  the  combination  should 
act  simultaneously.  If  those  elementary  parts  are  so  arranged 
that  the  successive  action  of  each  contributes  to  produce  some 
one  practical  result,  which  result,  when  attained,  is  the  product 
of  the  simultaneous  or  successive  action  of  all  the  elementary 
parts,  viewed  as  one  entire  whole,  a  valid  claim  for  thus  com- 
bining those  elementary  parts  may  be  made." 

§  34.  It  is  not  invention  to  duplicate  one  or  more  of  the 
parts  of  a  machine. 

In  Dunbar  v.  Meyers  3  the  patent  was  based  on  a  circular- 
saw  mill  adapted  to  sawing  lumber  into  thin  sheets  to  be  used 
for  the  backs  of  picture-frames  and  mirrors.  It  differed  from 
former  machines  used  for  the  same  purpose,  mainly  in  the 
fact  that  it  had  a  plate  on  each  side  of  the  saw  for  the  pur- 
pose of  expanding  the  saw  kerf  and  thus  keeping  the  sawed 
parts  away  from  the  sides  of  the  saw,  whereas  earlier 
machines  had  such  a  plate  on  only  one  side  of  the  saw.  The 
two  plates  of  the  patented  machine  differed  from  each  other 
in  diameter  and  in  one  or  two  other  respects,  but  the  function 
performed  by  each  of  them  was  substantially  identical  with 
that  performed  by  the  other.  The  Supreme  Court  therefore 
held  the  claim  which  covered  the  additional  plate  to  be  void 
for  want  of  invention. 

1  Combined    Can    Co.    v.    Lloyd,  9  Forbush  v.  Cook,  2  Fisher,  6G9, 

11  Fed.   Hep.    154,    1882  ;    Perry  v.  1857. 

Foundry  Co.  12  Fed.  Kep.  149,  436,  a  Dunbar  v.  Meyers,  94  U.  8.  197, 

1882  ;  Doubleday  v.  Koess,  11  Fed.  1876. 
Hep.  737,  1880. 


26  INVENTION.  [CHAP.  n. 

Millner  v.  Voss '  was  decided  by  Judge  BOND  in  Virginia. 
The  patent  involved  purported  to  cover  an  arrangement  of 
furnaces  and  flues  in  a  tobacco -curing  house.  It  appeared  to 
differ  from  prior  arrangements  only  in  the  fact  that  each  of 
the  furnaces  had  two  or  more  fire-places  of  different  sizes  on 
each  side  of  a  chimney,  whereas  former  arrangements  had  but 
one.  Judge  BOND  wittily  said  that,  "  Where  one  stove  is 
found  to  be  unequal  to  the  heating  of  a  room,  to  put  another 
beside  it,  even  though  smaller,  requires  no  invention. "  Mr. 
Millner' s  patent  was  therefore  held  to  be  void. 

§  35.  It  is  not  invention  to  omit  one  or  more  of  the  parts  of 
an  existing  thing,  unless  that  omission  causes  a  new  mode  of 
operation  of  the  parts  retained. 

Stow  v.  Chicago,5  decided  by  Judge  BLODOETT,  is  the  case 
which  perhaps  most  exactly  corresponds  with  this  rule.  The 
patent  in  that  case  covered  a  wood  pavement  like  that  of 
Nicolson,  except  that  it  omitted  the  board  foundation  and 
also  the  board  strips  of  that  earlier  pavement.  Judge  BLOD- 
GETT  held  that  those  omissions  constituted  no  invention,  say- 
ing :  "A  reconstruction  of  a  machine,  so  that  a  less  number 
of  parts  will  perform  all  the  functions  of  the  greater,  may  be 
invention  of  a  high  order,  but  the  omission  of  a  part,  with  a 
corresponding  omission  of  function,  so  that  the  retained  parts 
do  just  what  they  did  before  in  the  combination,  cannot  be 
other  than  a  mere  matter  of  judgment,  depending  upon 
whether  it  is  desirable  to  have  the  machine  do  all,  or  less,  than 
it  did  before." 

§  36.  It  is  not  invention  to  improve  a  known  structure  by 
substituting  an  equivalent  for  either  of  its  parts.3 

What  is  signified  in  the  patent  law  by  the  word  "  equiva- 
lent," is  explained  in  detail  in  the  chapter  on  infringement. 
The  subject  is  of  double  importance,  because  it  relates  some- 
times to  the  validity  and  sometimes  to  the  infringement  of 
patents.  A.  B.  may  construct  and  may  patent  a  machine 

1  Millner  v.  Voss,  4  Hughes.  262,  s  Smith    v.   Nichols,  21   Wallace, 

119,  1874  ;  Crouch  u.   Eoemer,  103 

*  Stow  v.  City  of  Chicago,  3  Bann.       U.  S.  797,  1880  ;  Perry  v.  Foundry 
&  Ard.  92,  1877.  Co.  12  Fed.  Rep.  436,  1882. 


CHAP.  H.]  INVENTION.  27 

which  differs  from  the  prior  patented  machine  of  C.  D.  in  one 
part  only.  If  the  courts  decide  that  the  new  part  inserted,  is 
an  equivalent  of  the  old  part  omitted,  then  the  machine  of  A. 
B.  will  be  an  infringement,  and  will  not  be  an  invention.  If, 
on  the  other  hand,  the  courts  hold  that  the  part  inserted  is 
not  such  an  equivalent,  then  the  machine  of  A.  B.  may  be  an 
invention,  and  it  will  not  be  an  infringement  of  any  claim 
covering  the  entire  machine  of  C.  D. 

§  37.  It  is  not  invention  to  combine  old  devices  into  a  new 
article  without  producing  any  new  mode  of  operation. 

Stimpsonv.  "Woodman '  involved  a  patent  for  a  machine,  for 
pebbling  leather.  It  gave  the  leather  the  pebbled  surface  by 
means  of  a  roller,  which  had  the  counterpart  of  that  surface 
engraved  or  sunk  on  its  periphery.  The  same  kind  of  roller 
had  previously  been  used  for  the  same  purpose  by  hand,  and 
the  same  kind  of  machine  had  been  used  for  compressing 
leather,  except  that  the  roller  in  it  was  smooth.  The  Supreme 
Court  held  that  the  change  involved  in  putting  the  old  figured 
hand  roller  in  the  place  of  the  plain  roller  of  the  machine,  in- 
volved no  invention,  and  that  the  patent  was  void,  if  the  facts 
were  as  stated. 

Ileald  v.  Rice J  was  based  on  a  patent  which  covered  a  cer- 
tain previously  known  straw-feeding  attachment  in  combina- 
tion with  a  certain  previously  known  return-flue  boiler,  that 
straw-feeding  attachment  having  been  previously  combined  with 
a  fire-box  boiler.  The  utility  of  the  return-flue  boiler  in  that 
combination  was  much  greater  than  that  of  the  fire-box  boiler, 
but  the  Supreme  Court  nevertheless  held  that  there  was  no  in- 
vention in  the  union  of  the  former  with  the  straw-feeding  at- 
tachment. 

Hall  v.  Macneale  8  shows  the  following  state  of  facts.  The 
patentee  first  made  safe  doors  the  plates  of  which  were  held 
together  by  cored  conical  arbors,  having  screw  threads  cut  on 
their  exterior  surfaces,  and  later  he  made  other  safe  doors,  the 


1  Stimpson  v.  Woodman,  10  Wai-          3  Hall  v.  Macnenle,  107  U.  8.    90, 
lace,  117,  1869.  1882. 

»  Heald  v.  Rice,  104  U.S.  754,  1881. 


28  INVENTION.  [CHAP.  n. 

plates  of  which  were  held  together  by  solid  conical  arbors 
which  had  no  such  screw  threads  as  the  cored  conical  arbors 
had,  and  he  afterward  obtained  a  patent  for  the  combination 
of  the  plates  of  safe  doors  with  solid  conical  arbors  having 
such  screw  threads.  The  Supreme  Court,  speaking  by 
Justice  BLATCHFORD,  said  that :  "  There  was  no  invention  in 
adding  to  the  solid  conical  bolt  the  screw  thread  of  the  cored 
conical  bolt. ' ' 

Several  Circuit  Court  cases  also  involve  the  doctrine  of  this 
section.  In  one  such  case  '  Justice  BLATCHFORD  held  a  patent 
to  be  void  for  want  of  invention  which  covered  a  combination 
of  a  whip  socket  having  an  annular  recess  in  it,  with  a  flexible 
elastic  ring  held  in  that  recess  by  its  own  elasticity,  and  pro- 
vided on  its  inner  edge  with  non-contiguous  projections,  sep- 
arated so  that  they  could  not  be  pressed  into  contact  with  each 
other  by  the  insertion  of  the  whip  handle  into  the  ring.  That 
decision  was  based  on  the  fact  that  a  prior  whip  socket  having 
an  annular  recess  had  been  combined  with  a  plain  rubber  ring 
in  that  recess,  and  on  the  further  fact  that  flexible  elastic 
rings  constructed  like  those  of  the  patent  had  been  combined 
with  a  whip  socket  which  had  no  annular  recess,  but  which 
clamped  that  ring  between  the  upper  end  of  that  sqcket  and 
a  cap  above  it.  Judge  LOWELL  has  also  decided  three  similar 
cases.  In  one  of  them  a  he  held  it  to  be  no  invention  to  give 
paper  collars  the  same  kind  of  surface  that  had  theretofore 
been  impressed  upon  other  articles  of  paper.  In  another 3  he 
decided  that  embossed  lines  on  writing  paper  being  old,  and 
ogee  lines  embossed  on  other  paper  being  old,  there  was  no  in- 
vention in  embossing  ogee  lines  on  writing  paper,  to  serve  as 
guides  to  the  eye  of  the  writer.  In  a  third  case,4  he  held  that, 
soft  base-balls  having  been  covered  with  a  double  cover,  and 
hard  base-balls  having  been  covered  with  a  single  cover,  there 
was  no  invention  in  covering  a  hard  base-ball  with  a  double 
cover. 

'  SearlH  v.  Merriam,  22  Off.  Gaz.  « Cone  v.  Morgan  Envelope  Co. 

4  Bann.  &  Aid.  109,  1879. 

Union  Paper  Collar  Co.  v.  Le-  <  Mahn  v.  Harwood,  3  Bann.  & 
land,  1  Bann.  &  Ard.  491,  1874.  Ard.  517,  1878. 


CHAP,  n.]  INVENTION.  29 

§  38.  It  is  not  invention  to  use  an  old  thing  or  process  for  a 
new  purpose. 

In  Tucker  v.  Spalding '  the  patent  covered  a  combination 
of  a  circular  disk  with  removable  saw  teeth.  There  was  a  prior 
combination  of  a  circular  disk  with  removable  cutters  for  the 
purpose  of  cutting  tongues  and  grooves.  The  Supreme  Court 
held  that  if  what  the  latter  combination  did  was  in  its  nature 
the  same  as  sawing,  and  if  its  structure  and  its  action  sug- 
gested to  the  mind  of  the  ordinarily  skillful  mechanic  this 
double  use  to  which  it  could  be  adapted  without  material 
change,  then  the  combination  of  the  patent  was  but  a  double 
use  of  the  older  combination,  and  was  therefore  not  an  inven- 
tion, and  not  patentable. 

Brown  v.  Piper2  is  a  case  in  which  the  Supreme  Court 
held,  that  a  patent  for  an  apparatus  for  preserving  fish  and 
other  articles  in  a  close  chamber  by  means  of  a  freezing  mixt- 
ure having  no  contact  with  the  atmosphere  of  the  preserving 
chamber,  covered  nothing  but  a  double  use  of  the  well-known 
ice-cream  freezer. 

In  Roberts  v.  Ryer  *  the  same  tribunal  decided  that  to 
change  the  form  and  proportions  of  the  compartments  of  a  re- 
frigerator, so  as  to  utilize  the  descending  instead  of  the  ascend- 
ing current  of  endlessly  circulating  air,  was  but  a  double  use 
of  that  refrigerator. 

A  number  of  Circuit  Court  cases  also  embody  the  rule  of 
this  section,  and  apply  it  to  particular  double  uses  of  old  in- 
ventions. One  of  these  relates  to  a  patent  for  an  improve- 
ment of  a  machine,4  and  another  to  a  patent  for  an  improve- 
ment of  a  manufacture,1  and  a  third  to  a  patent  for  a 
process." 

§  39.  The  rule  of  the  last  section  is  an  easy  one  to  apply  to 
a  case  to  which  it  is  relevant,  if  the  thing  or  process  covered 

1  Tucker  v.  Spalding,  13  Wallace,  4  Bean  v.  Smallwood,  2  Story,  408, 

453,  1871.  1843. 

8  Brown  v.  Piper,  91  U.  S.  37,  5  Meyer  v.  Pritchard,  1  Bann.  & 

1875.  Ard.  261,  1874. 

3  Roberts  v.  Eyer,  91  U.  S.  157,  °  Adama  v.  Loft,  4  Bann.  4  Ard. 

1875.  496,  1879. 


30  INVENTION.  [CHAP.  n. 

by  the  patent  in  that  case,  is  used  for  the  new  purpose,  with- 
out being  changed  either  in  construction  or  mode  of  opera- 
tion. That  is,  however,  not  always  the  fact,  and  where 
it  is  not  the  fact  the  rule  is  of  but  minor  practical  utility  as 
a  guide  to  a  just  conclusion.  It  does  not  apply  to  using 
any  new  thing  for  a  new  purpose  ;  and  in  order  to  apply  it 
to  anything  which  differs  somewhat  from  the  most  similar 
thing  that  preceded  it,  it  is  necessary  first  to  determine 
whether  that  difference  constitutes  legal  novelty :  to  de- 
termine whether  the  thing  covered  by  the  patent  is  really  old. 
That  question  must  be  investigated  by  the  aid  of  rules  other 
than  that  of  the  last  section,  and  when  it  is  determined  in  the 
negative  it  will  follow  that  the  rule  of  that  section  does  not 
apply  to  the  case. 

§  40.  Want  of  invention,  if  it  really  exists  in  a  particular 
process  or  tiling,  can  nearly  always  be  detected  by  one  or  an- 
other of  the  foregoing  rules.  When  a  case  arises  to  which 
neither  of  them  applies,  and  relevant  to  which  the  mind  re- 
mains in  uncertainty,  that  uncertainty  may  be  removed  by 
means  of  the  rule  in  Smith  v.  The  Dental  Vulcanite  Co.,1 
namely  :  When  the  other  facts  in  a  case  leave  the  question 
of  invention  in  doubt,  the  fact  that  the  device  has  gone  into 
general  use,  and  has  displaced  other  devices  which  had  pre- 
viously been  employed  for  analogous  uses,  is  sufficient  to  turn 
the  scale  in  favor  of  the  existence  of  invention. 

§  41.  To  change  the  form  of  a  machine  or  manufacture  is 
sometimes  invention,  and  sometimes  it  is  not  invention. 
Where  a  change  of  form  is  within  the  domain  of  mere  con- 
struction, it  is  not  invention,  but  where  it  involves  a  change  of 
mode  of  operation,  or  a  change  of  result,  it  is  invention,  unless 
it  is  held  to  be  otherwise  in  pursuance  of  some  rule  other  than 
any  which  relates  to  form.2 

§  42.  A  question  of  invention  is  a  question  of  fact  and  not 


1  Smith  v.  The  Dental  Vulcanite  310,  1827  ;  Mabie  v.  Haskell,  2  Clif. 

Co.  93  U.  8.  495,  1876.  610,  1865  ;  Aiken  v.  Dolan,  3  Fish- 

*  Winang  v.  Denmead,  15  Howard,  er,  204,  1867. 
341,  1853  ;  Davis  v.  Palmer,  2  Brock. 


CHAP.  II.]  INVENTION.  31 

of  law  ; '  though  it  is  to  be  determined  by  means  of  the  rules 
of  law  set  forth  in  this  chapter. 

§  43.  Every  inventor  or  constructor  is  presumed  by  the  law 
to  have  borrowed  from  another  whatever  he  produces  that 
was  actually  first  invented  and  used  by  that  other.2  It  fol- 
lows that  such  of  the  foregoing  rules  as  involve  an  inquiry 
into  the  state  of  the  art  to  which  the  thing  or  process  in  con- 
troversy pertains,  may  involve  an  inquiry  into  the  date  and  the 
character  of  inventions  which  were  in  fact  unknown  to  the 
patentee,  when  he  produced  that  thing  or  that  process.  Such 
an  inquiry  ought  not,  however,  to  include  anything  which, 
had  it  .been  identical  with  that  thing  or  that  process,  would  not 
have  negatived  its  novelty.  "What  prior  things  will  not  have 
the  latter  effect  is  fully  explained  in  the  third  chapter  of  this 
book. 

§  44.  It  was  shown  in  Section  23  that  patents  are  grantable 
for  nothing  but  inventions.  It  is  also  the  law  that  they  can 
be  granted  only  to  those  who  invented  the  inventions  they  re- 
spectively cover,  or  to  the  assignees  or  legal  representatives  of 
those  persons.  The  subjects  of  assignments  and  devolutions 
of  inventions  and  patents  are  explained  in  the  chapter  on 
title,  but  this  is  the  proper  place  in  which  to  treat  the  subjects 
of  joint  invention  and  sole  invention. 

§  45.  If  A.  B.  notices  the  need  of  a  new  machine  to  perform 
a  particular  function,  and  thereupon  conceives  the  plan  of  such 
a  machine,  and  proceeds  to  embody  that  plan  in  a  successful 
working  structure,  and  does  all  this  without  assistance  from 
any  other  person,  then  it  is  clear  that  he  is  a  sole  inventor  of 
that  machine.  If,  on  the  other  hand,  C.  D.  notices  the  need 
of  a  new  machine  to  perform  a  particular  function,  and  calls 
the  attention  of  E.  F.  to  the  matter,  and  a  successful  invention 
is,  after  many  conversations  between  the  two,  embodied  in  a 
working  machine  constructed  by  the  hands  of  both,  then  it  may 
be  that  C.  D.  is  the  sole  inventor,  or  it  may  be  that  E.  F.  is 
the  sole  inventor,  or  it  may  be  that  both  are  joint  inventors  of 

1  Poppenhusen  v.  Falke,  5  Blatch.  *  Crompton    v.    Knowles,   7  Fed. 

49,  1862  ;   Shuter  v.  Davis,  16  Fed.       Rep.  203,  1881. 
Eep.  564,  1883. 


32  INVENTION.  [CHAP.  n. 

the  machine  they  produced.  Upon  what  considerations  the 
fact  on  this  point  depends  it  is  now  in  order  to  point  out. 

§  46.  Every  machine,  before  it  can  be  used,  must  be  con- 
structed as  well  as  invented.  If  one  man  does  all  the  invent- 
ing and  another  does  all  the  constructing,  the  first  is  the  sole 
inventor.  Equally  axiomatic  is  the  proposition  that  if  both 
participate  in  the  inventing  they  are  joint  inventors,  regardless 
of  whether  both  take  part  in  the  constructing.  Plainly  true 
as  this  last  doctrine  appears  to  be,  there  are  several  Circuit 
Court  decisions  with  which  it  is  not  perfectly  harmonious. 

Justice  NELSON  once  decided  that  where  A.  B.  aided  C.  D. 
to  invent  a  machine,  but  did  not  furnish  all  the  information 
necessary  to  complete  the  invention,  and  where  C.  D.  there- 
upon did  the  required  residue  of  the  inventing,  and  did  all  of 
the  constructing  of  the  machine  without  further  help,  that  he 
was  the  sole  inventor  of  that  machine. ' 

Justice  SWAYNE,  on  the  other  hand,  decided  that  where 
A.  B.  drew  a  sketch  in  sand  to  represent  his  ideas  of  a  possible 
improvement  of  a  portable  steam  engine,  and  where  C.  D. 
from  that  sketch  made  working  drawings,  and  from  those  draw- 
ings built  a  working  engine,  without  further  interference  or 
suggestion  from  A.  B.,  that  the  latter  was  the  sole  inventor  of 
the  improvement  so  produced. " 

Now,  if  we  apply  the  doctrine  of  Justice  NELSON  to  the 
facts  passed  upon  by  Justice  SWAYNE,  we  shall  probably  be 
driven  to  the  conclusion  that  C.  D.  and  not  A.  B.  was  the 
sole  inventor  of  that  improvement  in  steam  engines,  because  it 
is  very  improbable  that  any  mere  sketch  in  sand  furnished 
C.  D.  with  all  the  information  necessary  to  complete  that  in- 
vention. There  must  have  been  something  which,  in  the  lan- 
guage of  Justice  NELSON,  "was  left  for  him  to  devise  and 
work  out  by  his  own  skill  or  ingenuity,  in  order  to  complete 
the  arrangement. ' ' 

In  the  case  before  Justice  NELSON  it  was  C.  D.,  and  in  that 
before  Justice  SWAYNE  it  was  A.  B.  who  had  obtained  a  sole 


1  Pitta    v.    Hall,    2    Blatch.    229,  *  Blandy  v.  Griffith,  3  Fisher,  609, 

1851.  1869. 


CHAP.   II.]  INVENTION.  33 

patent.  In  each  case  the  defendant  insisted  that  the  other 
man  concerned  in  the  production  of  the  invention,  and  not  the 
patentee,  was  the  sole  inventor,  and  in  both  cases  that  conten- 
tion was  evidently  unfounded  in  fact.  The  patents  were  prima 
facie  evidence  of  their  own  validity,  and  not  being  attacked  at 
their  vulnerable  points  were  necessarily  sustained.  Had  the 
defendant  in  either  case  urged  the  defence  of  joint  invention 
as  being  fatal  to  a  sole  patent,  then  the  true  question  would 
have  been  before  the  court,  and  the  charge  to  the  jury  in  the 
h'rst  case,  or  the  opinion  of  the  judge  in  the  other,  would  have 
^been  adapted  to  that  issue.  The  failure  of  counsel  to  take  the 
proper  ground  of  defence  in  the  two  cases  deprived  the  pro- 
fession and  the  public  of  what  would  doubtless  have  been 
.  very  instructive  deliverances  relevant  to  the  point  under  pres- 
ent inspection.  Taking  into  account,  however,  the  facts  of 
the  two  cases  and  the  lack  of  harmony  between  the  doctrines 
involved  in  the  two  opinions,  it  is  safest  to  lay  them  both  out 
of  view  in  the  present  connection.  Both  cannot  be  followed 
by  the  Supreme  Court,  and  it  is  not  probable  that  either  will 
be.  The  question  has  never  been  squarely  presented  to  that 
tribunal,  but  when  it  is  so  presented  it  will  doubtless  be  de- 
cided that  where  two  or  more  persons  exercised  their  inventive 
faculties  in  the  mutual  production  of  a  new  and  useful  process 
or  thing,  those  persons  are  joint  inventors  thereof,  regardless 
of  whether  one,  or  part,  or  all,  or  neither  of  those  persons 
constructed  or  helped  to  construct  the  first  specimen  of  that 
thing,  or  performed  or  helped  to  perform  the  first  instance  of 
that  process. 

§47.  The  case  of  the  Agawam  Co.  v.  Jordan1  is  not  in- 
consistent with  what  is  advanced  at  the  close  of  the  last  sec- 
tion. The  defendant  in  that  case  did  not  set  up  a  joint  in- 
vention by  the  patentee  and  another,  but  set  up  an  alleged 
sole  invention  by  that  other,  of  the  thing  patented.  The  most 
that  it  could  get  its  witness  to  testify,  however,  was  that  he 
suggested  to  the  patentee  one  of  the  parts  of  one  of  the  com- 
binations secured  by  the  patent,  but  that  the  patentee  himself 

1  Agawam  Co.  v.  Jordan,  7  Wallace,  583,  1868. 


3-4  INVENTION.  [CHAP.  n. 

contrived  the  devices  by  means  of  which  that  part  was  incor- 
porated into  that  combination.  The  patentee  did  not  claim 
the  suggested  part  as  his  invention,  but  only  claimed  several 
new  combinations  of  old  devices,  and  among  the  number  a 
combination  of  several  things,  one  of  which  was  said  to  have 
been  suggested  by  the  defendant's  witness.  In  that  state  of 
facts  it  was  clear  that  the  latter  was  neither  sole  nor  joint  in- 
ventor of  anything  covered  by  the  patent,  and  accordingly  the 
Supreme  Court  so  decided. 

§  48.  In  order  to  make  an  invention  of  importance,  a  con- 
siderable fund  of  general  knowledge  must  be  possessed  by  the^ 
inventor.  Where  that  fund  was  acquired  before  he  under- 
took his  invention,  it  is  easy  to  see  that  those  who  imparted  it 
are  not  thereby  made  joint  inventoYs  with  him.  Though  not 
quite  so  obvious,  it  is  equally  certain  that  if,  pending  his  ex- 
periments, an  inventor  seeks  and  secures  one  point  of  infor- 
mation from  a  scientist,  and  another  from  a  machinist,  and  a 
third  from  a  book,  he  is  not  on  account  of  having  done  the 
first  two,  any  less  a  sole  inventor  than  he  is  on  account  of  hav- 
ing done  the  last.1 

§  49.  To  constitute  a  man  an  inventor  it  is  not  necessary  for 
him  to  have  skill  enough  to  embody  his  invention  in  a  work- 
ing machine,  or  in  a  model,  or  even  in  a  drawing.  If  a  man 
furnishes  all  the  ideas  needed  to  produce  the  invention  aimed 
at,  he  may  avail  himself  of  the  mechanical  skill  of  others,  to 
practically  embody  or  represent  his  contrivance,  and  still  be 
the  sole  inventor  thereof. a 

§  50.  Under  the  statute,  only  he  or  they  who  have  invented 
a  particular  thing  can  lawfully  obtain  a  patent  therefor,  except 
in  cases  where  the  applicant  is  an  assignee  or  legal  representa- 
tive of  the  true  inventor  or  inventors.  It  follows  that  if  one 
of  two  or  more  persons  obtains  a  patent  for  a  process  or  thing 
which  was  jointly  invented  by  them  all,  that  patent  is  not 
valid.3  In  such  a  case  it  is  not  true  that  the  patentee  in- 


1  O'Reilly  v.  Morse,    15  Howard,       209.  1846. 

62«  1853-  « H.    T.    Slemmer's    Appeal,    58 

*  Sparkman  t\  Higgins,  1  Blatch.       Perm.  164,  1868. 


CHAP.  II.]  INVENTION.  35 

vented  the  thing  patented.  He  only  helped  to  invent  it.  If 
he  could  have  a  valid  patent  for  that  thing  or  process,  each  of 
his  co-inventors  could  do  likewise,  and  each  of  several  per- 
sons would  possess  the  exclusive  right  to  the  same.  As  to 
each  other,  such  a  state  of  affairs  among  patentees  would  be 
impossible,  and  as  to  the  public  it  would  be  intolerable. 

§  51.  So  also  if  several  persons  obtain  a  joint  patent  for 
what  was  invented  solely  by  one  of  them,  that  patent  is  void.1 
There  is  no  statutory  authority  to  grant  a  patent  to  a  non-in- 
ventor jointly  with  an  inventor,  without  an  assignment  or  a 
death,  any  more  than  there  is  to  grant  a  patent  to  a  non- 
inventor  alone. 

1  Kansom  v.  New  York,  1  Fisher,  269,  1856  ;  Hotchkiss  v.  Greenwood,  4 
McLean,  461,  1848  ;  Barrett  v.  Hall,  1  Mason,  473,  1818. 


CHAPTER  III. 

NOVELTY. 


52.  Novelty     necessary    to    patent- 
ability. 

53.  Novelty  defined. 

54.  Not  negatived  by  knowledge  or 

use  in  a  foreign  country. 

55.  Not  negatived  by  private  patent 
granted    in    a    foreign     coun- 
try. 

56.  Prior  printed  publications. 

57.  Fullness  of   prior  patents    and 
printed  publications. 

58.  Novelty   not  negatived    by  any 
abandoned  application. 

59.  Qualification  of  the  last  rule. 

60.  Successful  prior  applications. 

61.  Novelty  not  negatived  by  any  un- 
published   drawing,     or    prior 
model. 

62.  Novelty  not  negatived  by   any- 
thing substantially  different. 

63.  Abandoned  experiments. 

64.  Novelty  in  cases  of  designs. 

65.  Novelty  not   negatived  by  any- 
thing    apparently    similar     or 
chemically  identical,  but  prac- 
tically useless. 


66.  Novelty    not    negatived   by  an- 
tiquity of  parts. 

67.  Novelty  not  negatived  by  prior 
accidental  and  not  understood 
production. 

68.  Novelty  not   negatived    by  any 
thing  neither  designed,  nor  ap- 
parently adapted,    nor  actually 
used  for  the  same  purpose  as  the 
invention. 

69.  Comparative  dates. 

70.  Dates  of  patented  inventions. 

71.  Novelty  is  negatived  by  one  in- 

stance of  prior  knowledge  and 
use  in  this  country. 

72.  Novelty  is   negatived    by    prior 
making  without  using. 

73.  Inventor's  lack  of  knowledge  of 
anticipating    matter    is    imma- 
terial. 

74.  Old    thing    derived    from    new 
source. 

75.  Questions  of  novelty  are   ques- 
tions of  fact. 

76.  Burden    of    proof    relevant    to 
novelty. 


§  52.  THE  statutes  of  the  United  States  have  always  pro- 
vided that  anything  to  be  patentable  must  be  new.  State- 
ments that  some  things  are  not  patentable  because,  though 
new  in  a  commercial  sense,  they  are  not  new  in  the  eye  of  the 
patent  law,  occur  in  a  few  reported  cases.  In  every  such  in- 
stance, however,  it  would  have  been  more  accurate  to  say  that 
some  things  are  not  patentable  because,  though  new  things, 


CHAP.   III.]  NOVELTY.  37 

they  are  not  invented  things.  Such  things  lack  patentability 
not  because  they  lack  newness,  but  because  they  lack  inven- 
tion. The  subject  belongs  to  the  domain  of  invention  and  not 
to  that  of  novelty,  and  it  is  therefore  treated  in  the  second 
chapter  of  this  book.  With  this  explanation,  it  is  not  untrue 
or  misleading  to  say  that  whatever  is  really  new,  is  new  in  the 
eye  of  the  patent  law. 

§  53.  Many  things  are  new  in  the  eye  of  the  patent  statutes 
in  addition  to  those  things  which  are  really  new.  The  word 
has,  therefore,  a  broader  signification  in  those  statutes  than  it 
has  in  the  dictionaries  ;  but  that  broader  meaning  is  not  capa- 
ble of  a  short  definition.  Novelty  is  the  conventional  name  of 
that  statutory  newness,  but  that  name  does  not  indicate  the 
boundaries  of  the  thing  which  it  denotes.  Those  boundaries 
can  be  delineated  only  by  enumerating  and  explaining  those 
classes  of  facts  which  fall  within  them,  but  which  fall  without 
the  boundaries  of  actual  newness  :  those  classes  of  facts  which 
negative  newness,  but  which  do  not  negative  novelty. 

§  54.  Novelty  is  not  negatived  by  prior  knowledge  and  prior 
use  in  a  foreign  country  of  the  thing  patented,  provided  the 
patentee,  at  the  time  of  making  his  application  for  a  United 
States  patent,  believed  himself  to  be  the  first  inventor  of  the 
thing  covered  thereby,  and  provided  that  thing  had  nowhere 
been  patented  to  another,  and  nowhere  been  described  in  a 
printed  publication.1  Whether  knowledge  in  the  mind  of  a 
man  who  lives  in  this  country,  that  the  patented  thing  was 
known  and  used  in  a  foreign  country  before  its  invention  here, 
is  such  knowledge  in  this  country  as  will  negative  novelty,  is  a 
question  which  has  arisen  in  one  case,  but  has  not  yet  been  de- 
cided.2 

§  55.  Novelty  is  not  negatived  by  any  prior  private  patent 
granted  in  any  foreign  country,3  nor  by  any  public  patent 
granted  in  England,  unless  the  specification  of  the  latter  was 
enrolled  before  the  person  obtaining  the  American  patent 


1  Kevised  Statutes,  Sections  4887      Rep.  611,  1881. 

and  4923.  3  Brooks    v.   Norcross,   2    Fisher, 

*  Illingworth  v.  Spaulding,  9  Fed.       CGI,  1851. 


38  NOVELTY.  [CHAP.  m. 

made  the  invention.1  In  neither  of  those  two  cases  can  it  be 
truly  said  that  the  invention  was  antecedently  patented  in  a 
foreign  country,  that  is,  made  patent  to  the  public,  and  there- 
fore such  transactions  do  not  come  within  the  statute.8  On  the 
other  hand,  it  is  safe  to  say  that  novelty  would  be  negatived 
by  a  full  description  in  the  specification  of  a  prior  public  pat- 
ent of  the  thing  covered  by  an  American  patent,  even  though 
that  thing  was  not  covered  by  the  claims  of  the  prior  patent, 
and  therefore  not  patented  to  the  prior  inventor.  This  doc- 
trine must  result  from  the  fact  that  whatever  is  well  described 
in  a  patent  is  patented,  that  is,  made  patent  to  the  public, 
whether  it  is  claimed  by  the  patentee  or  not.  Indeed  the 
Supreme  Court  has  decided  that  novelty  is  negatived  by  a 
prior  patent  which  shows  the  device  in  its  drawings  and  de- 
scribes it  in  the  specification,  but  does  not  clearly  state  its 
use.3 

§  56.  A  printed  publication  is  anything  which  is  printed,  and 
without  any  injunction  of  secrecy,  is  distributed  to  any  part  of 
the  public  in  any  country.  Indeed,  it  seems  reasonable  that 
no  actual  distribution  need  occur,  but  that  exposure  of  printed 
matter  for  sale  is  enough  to  constitute  a  printed  publication. 
Whether  a  drawing,  either  in  a  patent  or  a  printed  publication, 
if  unaccompanied  by  description  in  words,  will  negative  nov- 
elty is  an  unsettled  question.4  Its  answer  depends  upon  the 
meaning  of  the  word  "  described  "  in  the  statute.  If  that 
meaning  is  confined  to  the  last  definition  of  Webster,  then  only 
description  in  words  can  negative  novelty,  but  if  it  covers  also 
the  first  definition  of  Webster,  then  representation  by  lines,  as 
in  a  drawing,  must  have  that  effect.  Inasmuch  as  drawings 
can  generally  give  information  which  is  as  clear  as  that  which 
words  alone  can  give,  relevant  to  the  construction  and  charac- 
ter of  a  machine  or  manufacture,  there  seems  to  be  no  merito- 

1  O'Reilly  v.  Morse,  15  Howard,  62  8  Stow  v.  Chicago,  104  U.  S.  547, 

1853  ;    Willimantic    Linen    Co.    v.  1881. 

Clark  Thread  Co.   4  Bann.  &  Ard.  4  Judson  v.  Cope,  1  Fisher,  619, 

134,  1879.  I860  ;  Reeves  v.  Bridge  Co.  5  Fisher, 

8  Smith  v.  Dental  Vulcanite   Co.  456,  1872. 
93  U.  8.  498,  1876. 


CHAP,  m.]  NOVELTY.  "    39 

rious  reason  for  tlieir  not  having  the  same  effect  on  the  novelty 
of  subsequent  patents.  No  injustice  can  result  from  such  a 
rule,  because  in  order  to  have  any  effect  on  such  novelty,  draw- 
ings as  well  as  words  must  be  able  to  endure  the  test  stated  in 
the  next  section. 

§  57.  Novelty  is  not  negatived  by  any  prior  patent  or 
printed  publication,  unless  the  information  contained  therein, 
is  full  enough  and  precise  enough  to  enable  any  person  skilled 
in  the  art  to  which  it  relates,  to  perform  the  process  or  make 
the  thing  covered  by  the  patent  sought  to  be  anticipated.1  It 
follows  from  this  rule  that  difference  is  fatal  to  anticipation,  if 
that  difference  is  greater  than  any  which  could  occur  between 
two  things,  independently  constructed  by  two  skillful  mechanics 
from  the  same  specification.  The  phrase  "  skillful  mechanic," 
as  used  in  this  connection,  does  not  include  mechanics  who  are 
skillful  only  in  methods  of  servile  imitation.  It  refers  only  to 
mechanics  who  know  how  to  vary  form  without  varying  sub- 
stance, and  who,  in  constructing  a  machine  from  a  printed  de- 
scription, or  from  Patent  Office  drawings,  could  readily  and 
would  freely  alter  proportions  and  change  details  in  order  to 
adapt  the  contrivance  to  a  particular  use,  or  in  order  to  secure 
greater  merit  of  workmanship  for  the  thing  constructed.  If 
a  difference  greater  than  what  could  arise  in  this  way,  is  found 
to  exist  between  a  patented  thing,  and  the  thing  described  in  a 
prior  patent  or  printed  publication,  then  the  latter  cannot  neg- 
ative the  novelty  of  the  former.  It  may,  however,  defeat  the 
patent  for  want  of  invention,  though  failing  to  defeat  it  for 
want  of  novelty.  Whether  or  not  it  can  do  so,  is  to  be  ascer- 
tained in  each  case  by  applying  thereto  the  established  rules  on 
the  subject  of  invention. 

§  58.  Novelty  is  not  negatived  by  any  prior  abandoned  ap- 
plication for  a  patent.3  Abandoned  applications  for  patents  are 


1  Seymour  v.  Osborne,  11  Wallace,  schlag  v.  Scamoni,  7  Fed.  Rep.  584, 

516,  1870  ;  Cawood  Patent,  94  U.  S.  1881. 

704,   1876  ;    Roberts    v.    Dickey,   4  *  Corn-Planter  Patent,  23  Wallace, 

Fisher,  532,  1871  ;  Cahill  v.  Brown,  211, 1874  ;  N.  W.  Extinguisher  Co.  v. 

3  Bann.  &  Ard.  580,  1878  ;  Hammer-  Phila.  Extinguisher  Co.  1  Bann.  & 


4:0  NOVELTY.  [CHAP.  in. 

not  by  the  statutes  made  bars  to  patents  to  later  applicants. 
They  furnish  no  evidence  that  any  specimen  of  the  things  they 
describe  was  ever  made  or  used  anywhere.  Being  only  pen 
and  ink  representations  of  what  may  have  existed  only  as  men- 
tal conceptions  of  the  men  who  put  them  upon  paper,  they  do 
not  prove  that  the  things  which  they  depict  were  ever  known 
in  any  country.  Nor  can  they  be  classed  among  printed  pub- 
lications, for  they  are  usually  in  writing,  and  are  not  published 
otherwise  than  by  being  placed  on  tile  in  the  Patent  Office. 

§  59.  When  there  is  evidence  that  he  who  made  and 
abandoned  an  application  for  a  patent,  made  also  some  effort  to 
carry  his  invention  into  practical  use,  then  that  application  is 
admissible  in  evidence  to  aid  the  court  to  determine  the  date 
and  the  nature  of  the  invention  which  was  sought  to  be  em- 
bodied in  a  working  form.  If,  however,  upon  the  whole  of  the 
evidence,  it  appears  that  what  the  inventor  did,  outside  of  his 
abandoned  application,  did  not  amount  to  enough  to  negative 
the  novelty  of  a  subsequent  patent  to  a  later  inventor,  then 
that  abandoned  application  becomes  immaterial  to  that 
issue.1 

§  60.  Novelty  is  not  negatived  by  any  successful  application 
for  a  patent,  nor  by  any  documents  pertaining  thereto,  other 
than  the  letters  patent  issued  in  pursuance  thereof.8  When 
such  an  application,  or  such  a  document,  is  offered  to  prove  the 
existence  of  something  which  is  not  shown  by  the  letters  pat- 
ent themselves,  the  justice  and  propriety  of  this  rule  is  appar- 
ent at  a  glance.  The  rule  necessarily  follows  from  the  same 
considerations  as  those  which  reject  an  abandoned  application, 
when  an  abandoned  application  is  offered  to  negative  novelty. 
But  when  a  successful  application  is  offered  only  to  prove  the 
date  of  the  invention  claimed  in  the  resulting  patent,  a  re- 
mote contingency  can  be  imagined  in  which  the  rule  would 
operate  unjustly  if  enforced.  That  contingency  is,  however, 
so  unlikely  to  occur,  that  it  need  not  be  explained  in  a  text- 

Ard.  177,  1874 ;  Lyman  Ventilating  211,  1874. 

and    Refrigerator    Co.    v.   Lalor,    1  *  Howes   v.   McNeal,    5  Bann.    <fc 

Barm.  &  Ard.  403,  1871.  Ard.  77,  1880. 
1  Corn-Planter  Patent,  23  Vv~allac6, 


CHAP.  HI.]  NOVELTY.  41 

book.     When  it  does  arise,  it  will  doubtless  occasion  the  estab- 
lishment of  an  exception  to  the  rule. 

§  61.  Novelty  is  not  negatived  by  any  prior  unpublished 
drawings,  no  matter  how  completely  they  may  exhibit  the  pat- 
ented invention  ; '  nor  by  any  prior  model,  no  matter  how  fully 
it  may  coincide  with  the  thing  covered  by  the  patent."  The 
reason  of  this  rule  is  not  stated  with  fullness  in  either  of  the 
cases  which  support  it,  but  that  reason  is  deducible  from  the 
statute,  and  from  the  nature  of  drawings  and  of  models.  The 
statute  provides,  relevant  to  the  newness  of  patentable  ma- 
chines and  manufactures  and  improvements  thereof,  that  they 
shall  not  have  been  previously  known  or  used  by  others  in 
this  country.3  Now,  it  is  clear  that  to  use  a  model  or  a  draw- 
ing, is  not  to  use  the  machine  or  manufacture  which  it  repre- 
sents, and  it  is  equally  obvious,  that  to  know  a  drawing  or  a 
model,  is  not  the  same  thing  as  knowing  the  article  which  that 
drawing  or  that  model  more  or  less  imperfectly  pictures  to  the 
eye.  It  follows  that  neither  of  those  things  negative  the  sort 
of  newness  required  by  the  statute.  Nor  is  the  statutory  pro- 
vision on  this  point  lacking  in  good  reasons  to  support  it.  Pri- 
vate drawings  may  be  mislaid  or  hidden,  so  as  to  preclude  all 
probability  of  the  public  ever  deriving  any  benefit  therefrom  ; 
and  even  if  they  are  seen  by  several  or  by  many,  they  are  apt 
to  be  understood  by  few  or  by  none.  Models  also  are  liable  to 
be  secluded  from  view  and  to  suffer  change,  and  thus  to  fail  of 
propagation.  Moreover,  if  a  patent  could  be  defeated  by  pro- 
ducing a  model  or  a  drawing  to  correspond  therewith,  and  by 
testifying  that  it  was  made  at  some  sufficiently  remote  point  of 
time  in  the  past,  a  strong  temptation  would  be  offered  to  per- 
jury. Several  considerations  of  public  policy  and  of  private 
right  combine,  therefore,  to  justify  the  rule  of  this  section. 

1  Ellithorp  v.  Kobertson,  4  Blatch.  Fisher,  107,  1864  ;  Johnson  v.  Mc- 

309, 1859  ;  Drapers  Potomska Mills,  Cullongh,  4  Fisher,  170,  1870  ;  Stil- 

3  Bnnn.  &  Ard.   214,   1878  ;  Detroit  well  &  Bierce  Mfg.  Co.  v.  Cincinnati 

Lubricator  Mfg.  Co.  v.  Renchard,  9  Gas  Light  and  Coke  Co.  1  Bann.  & 

Fed.  Rep.  293,  1881.  Ard.  610,  1875. 

8  Cahoon    v.   Ring,    1    Clif.    593,  3  Revised  Statutes,  Section  4886. 
1861  ;    Stainthorp    v.   Hnmiston,   4 


42  NOVELTY.  [CHAP.  m. 

* 

§  62.  Novelty  is  not  negatived  by  anything  substantially  dif- 
ferent from  that  covered  by  the  patent,  even  though  the  func- 
tion of  the  prior  thing  was  identical  with  that  of  the  patented 
article.  This  rule  necessarily  follows  from  the  doctrine  that  a 
valid  patent  may  be  granted  for  a  new  means  of  producing  an 
old  result.1  In  order  to  defeat  a  patent  for  want  of  novelty, 
the  anticipating  thing  must  be  very  nearly  identical  with  that 
covered  by  the  patent.  If  a  marked  and  apparently  important 
difference  exists  between  the  two,  the  defense  will  fail.  But  a 
thing  which  will  not  defeat  a  patent  for  want  of  novelty,  may 
defeat  it  for  want  of  invention.  It  will  do  so  wherever  the 
observed  difference  corresponds  in  character  with  either  of 
those  differences  between  a  patented  thing  and  the  prior  art, 
which,  in  the  second  chapter  of  this  book,  were  shown  to  be 
insufficient  to  constitute  invention. 

§  63.  The  rule  of  the  last  section  will  probably  govern 
every  case  which  justly  comes  within  the  doctrine  that  nov- 
elty is  not  negatived  by  any  unsuccessful  abandoned  experi- 
ment. That  rule  is  far  more  reliable  than  that  doctrine,  be- 
cause the  latter  is  subject  to  such  qualifications  and  explana- 
tions, that  its  practical  utility  in  deciding  cases  is  but  small.  A 
thing  may  have  been  abandoned  and  still  negative  the  novelty 
of  a  thing  independently  invented  long  after  that  abandon- 
ment.2 Such  will  be  the  result  if  the  earlier  thing  was  iden- 
tical with  the  later,  and  was  used  long  enough  to  show  that  it 
would  work.3 

If  a  given  experimental  device  was  unsuccessful  in  the 
hands  of  its  contriver,  that  fact  must  have  been  due  either  to 
one  or  more  faults  of  principle,  or  to  one  or  more  faults  of 
construction,  or  to  one  or  more  faults  of  each  of  these  kinds. 
If  partly  or  wholly  due  to  any  fault  of  principle,  that  very  fact 

1  O'Reilly  v.  Morse,  15  Howard,  Nish  v.  Everson,  5  Bann.  &  Ard. 
62,  1853.  484,  1880. 

2  Waterman  v.  Thomson,  2  Fisher,  3  Gayler   v.   Wilder,   10  Howard, 
463, 1863  ;  Shoup  v.  Henrici,  2 Bann.  477,    1850;   Sayles   v.   Kailway  Co., 
&  Ard.    249,   1876  ;  N.    W.    Extin-  4  Fisher,  588,  1871  ;  Stephenson  v. 
gnisher  Co.  v.  Phila.   Extinguisher  Railroad    Co.,  14    Fed.    Rep.    459, 
Co.  1  Bann.  &  Ard.  177,  1874  ;  Me-  1881. 


CHAP.   HI.]  NOVELTY.  43 

shows  that  the  unsuccessful  device  was  substantially  different 
from  subsequent  successful  patented  things.  For  that  reason 
alone,  it  would  have  failed  to  negative  the  novelty  of  those 
things,  even  if  it  had  not  been  unsuccessful.  If,  on  the  other 
hand,  a  prior  device  was  unsuccessful  merely  because  its  con- 
struction was  faulty,  it  is  far  from  certain  that  it  will  not  be 
held  to  negative  the  novelty  of  all  subsequent  devices  identical 
with  it  in  plan,  mode  of  operation,  and  function. 

The  Stevens  car-brake  can  conveniently  be  used  to  illustrate 
this  point,  because  the  reader  can  look  upon  a  wood-cut  of 
that  brake  in  Webster's  Dictionary,  and  because  its  construc- 
tion is  particularly  suitable  to  the  question  in  hand.  Simple 
and  excellent  as  that  contrivance  is,  it  was  not  conceived  till 
after  several  more  complicated  and  less  useful  brakes  were 
produced  and  patented.  The  conception  came  to  the  invent- 
or in  one  moment  of  time,  though  after  a  long  study  of  the 
problem.  He  knew  then,  as  well  as  he  ever  did  afterward, 
that  the  conceived' combination  would  certainly  succeed.  Now 
suppose  some  other  mechanic  in  the  United  States  had  con- 
ceived the  same  apparatus  a  year  earlier,  and  had  promptly 
constructed  all  the  parts  of  the  first  specimen  thereof,  and  had 
promptly  fitted  all  those  parts  together  and  to  a  railroad  car  ; 
and  suppose  that  the  chain  F,  being  somewhat  light  in  propor- 
tion to  the  strain  upon  it,  had  parted  asunder  the  first  time  the 
apparatus  was  attempted  to  be  operated,  so  that  no  result  was 
produced  ;  and  suppose  that,  because  of  sickness,  death,  or 
other  sufficient  reason,  no  attempt  was  ever  made  to  mend  or 
replace  that  chain,  or  to  again  use  that  specimen  of  the  ap- 
paratus. Such  events  would  constitute  an  unsuccessful  aban- 
doned experiment,  but  nevertheless  they  would  probably  be 
held  to  negative  the  novelty  of  the  Stevens  patent,  because 
they  would  teach  the  public  how  to  make  and  use  specimens 
of  the  Stevens  brake  about  as  effectually  as  if  the  chain  F  had 
not  parted.  It  is  believed  that  no  precedent  exists  for  an 
opinion  contrary  to  this,  and  if  one  is  hereafter  discovered  or 
made,  it  will  probably  be  found  to  be  inconsistent  with  at  least 
one  decision  of  the  Supreme  Court. ' 

1  Pickering  v.  McCullough,  104  U.  S.  319,  1881. 


44  NOVELTY.  [CHAP.  in. 

The  truth,  therefore,  appears  to  be  that  an  unsuccessful 
abandoned  experiment  may  possibly  negative  the  novelty  of  a 
later  invention,  and  that  where  it  fails  to  have  that  effect,  it 
would  have  failed,  even  if  it  had  been  neither  unsuccessful  nor 
abandoned.  Novelty  is  to  be  ascribed  to  new  things,  regard- 
less of  whether  old  and  different  things  were  successful  or  un- 
successful, abandoned  or  not  abandoned.  Novelty  is  to  be 
denied  to  old  things,  regardless  of  the  accidents  which  caused 
earlier  specimens  of  the  same  things  to  fail  to  operate,  or  caused 
their  use  to  be  discontinued. 

§  64.  The  question  of  the  novelty  of  a  design,  is  to  be  deter- 
mined by  the  comparative  appearance  of  that  design  and  of 
prior  designs,  in  the  eyes  of  average  observers,  and  not  by 
their  comparative  appearance  in  the  eyes  of  experts  making  an 
analytical  inspection.1  Nor  is  the  novelty  of  any  design  neg- 
atived by  the  fact  that  all  of  its  features  can  be  collected  out 
of  scattered  prior  designs.2 

§  65.  Novelty  is  not  negatived  by  anything  fundamentally 
incapable  of  the  function  of  the  thing  covered  by  the  patent, 
even  though  the  character  of  the  prior  tiling  was  chemically 
identical  with  the  patented  thing,  or  mechanically  similar 
thereto. 

In  Morey  v.  Lockwood 8  the  prior  Man  syringe  was  relied 
upon  to  negative  the  novelty  of  the  syringe  of  Dr.  Davidson 
and  his  brother.  The  latter  is  the  now  well-known  soft  rub- 
ber bulb  apparatus.  The  former  was  exactly  like  it,  except 
that  the  central  part  was  a  soft  rubber  cylinder  with  metallic 
heads,  instead  of  a  soft  rubber  bulb.  The  mode  of  operation 
of  the  two  syringes  was  identical.  The  Man  apparatus 
proved  to  be  of  no  practical  value,  simply  because  the  metallic 
heads  of  the  cylinder  strongly  counteracted  the  user's  efforts  to 
compress  its  rubber  walls.  Feeble  persons  could  not  use  it, 
and  those  who  had  enough  muscular  power  did  not  care  to  per- 
form the  needed  labor.  Practically,  therefore,  the  Mau 

1  Perry  «.  Starrett,  3  Bann.  &  Ard.       144,  1882. 

489,  1878.  a  Morey  v.  Lockwood,  8  Wallace, 

1  Simpson  u.  Davis,  12  Fed.  Rep.       230,  1868. 


CHAP.   III.]  NOVELTY.  45 

syringe  proved  to  be  of  no  value,  and  very  few  were  ever  sold. 
For  these  reasons  the  Supreme  Court  held  that  it  did  not  neg- 
ative the  novelty  of  the  .Davidson  patent. 

The  Wood  Finishing  Co.  v.  Hooper '  is  a  case  the  patent 
involved  in  which,  covered  the  employment  of  finely  pow- 
dered flint,  quartz,  or  feldspar,  mixed  with  oil  or  other  fluent 
substance,  for  the  purpose  of  filling  the  pores  of  the  surface  of 
wood.  A  prior  patent  had  been  granted  for  the  employment 
of  silicious  marl  or  infusorial  earth  for  the  same  purpose.  It 
was  shown  that  all  five  of  these  substances  consisted  mainly 
of  silica  or  the  oxide  of  silicon,  but  that  the  first  three  differed 
from  the  last  two,  in  being  non-absorbent  instead  of  porous,  and 
in  consisting  of  angular  instead  of  rounded  particles.  These 
two  differences  made  the  first  three  substances  very  valuable 
for  wood-filling,  whereas  the  others  were  not  valuable  for  that 
purpose.  Judge  NATHANIEL  SHIPMAN,  therefore,  decided  that 
the  prior  patent  did  not  negative  the  novelty  of  the  later  one. 

§  66.  Novelty  is  not  negatived  by  the  fact  that  every  part 
of  the  patented  thing  is  old.2  This  rule  necessarily  follows 
from  the  doctrine  which  allows  patents  for  new  combinations 
of  old  devices.  In  such  cases  the  whole  is  different  from  the 
sum  of  all  its  parts,  precisely  as  this  printed  page  is  different 
from  what  it  would  be  if  the  same  words  were  arranged  in 
alphabetical  order,  or  were  printed  promiscuously  upon  the 
paper.  If,  however,  a  new  assemblage  of  old  things  amounts 
only  to  aggregation  and  not  to  combination,  or  if  it  results  in 
no  new  mode  of  operation,  the  patent  which  covers  it  will  be 
void  for  want  of  invention,3  though  not  void  for  want  of 
novelty. 

§  67.  Novelty  is  not  negatived  by  any  prior  accidental  pro- 
duction of  the  same  thing,  unaccompanied  by  knowledge  on 
the  part  of  the  producer,  sufficient  to  enable  him  to  repeat 
that  production.4  The  reason  of  this  rule  arises  out  of  that 


'  Bridgeport  Wood  Finishing  Co.  1879  ;  Parks  v.  Booth,  102  U.  S.  104, 

v.  Hooper,  5  Fed.  Rep.  63,  1880.  1880. 

8  Bates  v,  Coe,  98  U.  S.  48,  1878  ;  3  Sections  32  and  37  of  this  book. 

Imhaeuser  v.  Buerk,  101  U.  S.  (560,  4  Ransom  v.  New  York,  1  Fisher, 


46  NOVELTY.  [CHAP.  in. 

point  of  patent  law  policy  which  rewards  persons  for  teaching 
the  public  how  to  perform  processes  and  construct  things 
which  nobody  else  in  the  United  States  knew  how  to  perform 
or  to  construct,  and  relevant  to  which  no  adequate  informa- 
tion could  be  found  in  any  public  patent  or  printed  publication 
anywhere  in  the  world. 

§  63.  Novelty  is  not  negatived  by  anything  which  was 
neither  designed,  nor  apparently  adapted,  nor  actually  used,  to 
perform  the  function  of  the  thing  covered  by  the  pateni, 
though  it  might  have  been  made  to  perform  that  function  by 
'means  not  substantially  different  from  that  of  the  patented  in- 
vention. '  This  rule  rests  upon  the  same  reason  as  the  rule  of 
the  last  section,  and  is  even  more  favorable  to  patentees  than 
that.  Though  recently  established,  it  is  established  thorough- 
ly, inasmuch  as  it  is  the  result  of  repeated  and  careful  consid- 
eration by  one  of  the  ablest  patent  jurists  in  the  United  States, 
and  inasmuch,  as  in  establishing  it,  his  associates  on  the  Su- 
preme bench  concurred  with  him  in  reversing  his  own  decision 
on  the  circuit. 

The  rule  of  this  section  cannot  govern  any  case  which  lacks 
either  of  the  circumstances  upon  which  it  is  predicated,  for 
negation  of  novelty  is  not  averted  by  the  mere  fact  that  the 
inventor  of  the  prior  device  did  not  design  it  to  perform  the 
function  of  the  patented  device,  nor  by  the  mere  fact  that  its 
ability  to  perform  that  function  is  not  apparent  to  every  be- 
holder, nor  by  the  mere  fact  that  it  was  never  actually  used 
for  that  purpose,  nor  by  any  two  of  these  facts  combined. 

§  69.  Novelty  is  not  negatived  by  anything  which  was  in- 
vented, patented,  or  described  in  a  printed  publication  prior 
to  the  granting  of  the  patent  sought  to  be  anticipated,  or  even 
prior  to  the  application  therefor,  unless  the  anticipating  event 
occurred  prior  to  the  date  of  the  invention  secured  by  that 
patent.  * 

265, 1856  ;  Pelton  v.  Waters,  1  Barm.  *  Cochrane  v.   Deener,   94  U.   8. 

&  Aid.  599,  1874  ;  Andrews  v.  Car-  791,   1876  ;  Elizabeth   v.  Pavement 

man,  2  Bann.  &  Ard.  277,  1876.  Co.  97  U.  S.  130,   1877  ;  Parker  v. 

1  Clongh   v.   Mfg.   Co.  106  U.  8.  Hulme,  1  Fisher,  52,  1849  ;  Barthol- 

178,  1882.  omew  v.  Sawyer,  1  Fisher,  520,  1859. 


CHAP.   III.]  NOVELTY.  47 

One  apparent  exception  to  this  rule  lias  been  stated  in  an 
obiter  dictum  by  the  Supreme  Court,1  and  indorsed  in  an- 
other obiter  dictum  by  Judge  McKiNNON.3  In  those  instances 
it  was  said  that  where  two  patents  for  the  same  invention  are 
granted  to  the  same  inventor,  the  last  and  not  the  first  is  void, 
even  where  the  last  was  first  applied  for.  The  exception  is 
however  only  apparent,  because  the  patent  last  applied  for  is  as 
much  entitled  to  date  from  the  making  of  the  invention  as  the 
other.  The  date  of  invention  assignable  to  the  two  patents 
being  exactly  the  same,  the  first  patent  will  negative  the  nov- 
elty of  the  last,  regardless  of  which  was  first  applied  for.  The 
dictum  of  the  Supreme  Court  in  this  matter,  is  not  inconsistent 
with  Judge  LOWELL'S  decision,3  that,  "  in  the  absence  of  other 
evidence  of  the  dates  of  invention,  the  first  application  must 
be  taken  to  represent  the  first  invention  ;"  because  the  fact  of 
an  identical  inventor  is  evidence,  in  such  cases,  that  the  date  of 
invention  was  identical.  ISfo  man  can  make  one  invention  at 
two  different  times. 

§  70.  In  order  to  apply  the  rule  of  the  last  section,  it  is  nec- 
essary to  fix  the  date  of  the  invention  covered  by  the  patent 
sought  to  be  anticipated.  In  cases  where  the  invention  may 
be  exhibited  in  a  drawing  or  in  a  model,  it  will  date  from  the 
completion  of  such  a  model  or  such  a  drawing  as  is  sufficiently 
plain  to  enable  those  skilled  in  the  art  to  understand  the  in- 
vention.4 In  cases  where  the  invention  may  be  explained  in 
words,  without  the  aid  of  any  model  or  any  drawing,  it  ought 
to  date  from  the  completion  of  such  a  written  description  as 
would  teach  others  how  to  make  and  use  the  invention  de- 
scribed. In  cases  where  the  inventor  makes  a  specimen  of 
the  thing  invented  before  he  makes  any  model,  or  drawing,  or 
written  description  to  represent  that  thing,  the  invention  will 
date  from  the  completion  of  that  specimen.  Perfection  is 
not  necessary  to  such  a  specimen,  in  order  to  entitle  it  to  such 
an  effect.  Substantial  completeness  is  enough. 

1  Suffolk  Co.  v.  Hayden,  3  Wallace,  3  Pennington  v.  King,  7  Fed.  Rep. 

315,  1865.  462,  1881. 

*  M'Millin  v.  Rees,  5  Bann.  &  Ard.  4  Loom  Co.  v.  Biggins,  105  U.  S. 

269,  1880.  594,  1881. 


48  NOVELTY.  [CHAP.  m. 

No  invention  ought  to  date  from  any  day  wherein  it  had  no 
existence  or  representation  outside  of  the  mind  of  the  in- 
ventor, no  matter  how  clear  or  how  complete  his  mental  con- 
ception of  its  character  and  mode  of  operation  may  have  been. 
Mental  conceptions  are  not  useful  inventions,  until  they  are  so 
embodied  that  the  world  could  use  them  after  the  death  of  the 
persons  who  conceived  them.  To  allow  inventions  to  take 
date  from  mental  conceptions,  would  strongly  tempt  inventors 
to  commit  perjury  in  order  to  appear  to  anticipate  real  antici- 
pations of  their  patents. 

"Whether  a  complete  oral  description  given  by  the  inventor  to 
another,  can  give  an  invention  a  date  earlier  than  that  to  which 
it  would  otherwise  be  entitled,  is  an  unsettled  question.  It 
can  be  said  in  the  affirmative,  that  such  a  description  is  as 
likely  to  be  communicated  to  the  world  in  case  of  the  in- 
ventor's death  as  though  it  were  put  in  writing,  for  an  average 
writing  is  as  likely  to  be  lost  or  destroyed,  as  an  average  person 
is  to  die  or  become  insane.  It  can  be  said  in  the  negative  that 
the  average  human  memory  cannot  reproduce  an  oral  descrip- 
tion, whereas  a  writing,  or  a  drawing,  or  a  model  will  retain 
whatever  it  receives.  The  equities  of  the  point  are  nearly 
balanced,  and .  the  final  settlement  of  the  question  cannot  be 
foreseen. 

§  71.  Kovelty  is  negatived  by  prior  knowledge  and  use  in 
this  country,  by  even  a  single  person,  of  the  thing  patented.1 
This  rule  applies  even  to  cases  where  that  knowledge  and  use 
were  purposely  kept  secret ;  *  and  it  applies  no  matter  how 
limited  that  use  may  have  been.3 

In  Gayler  v.  Wilder4  the  Supreme  Court  announced  an  ex- 
ception to  this  rule,  but  in  a  later  case  it  intimated  a  denial,  or 
at  least  a  doubt,  of  the  validity  of  that  exception.5  According 
to  the  opinion  of  a  majority  of  the  court  in  the  first  case,  a  sin- 
gle instance  of  prior  knowledge  and  use  will  not  negative  nov- 

1  Coffin  v.  Ogden,  18  Wallace,  120,  2,  1853. 

1873.  «  Gayler   v.   Wilder,   10  Howard, 

» Reed  v.  Cotter,  1  Story,  598,  1841.  477,  1850. 

«  Bedford  u.  Hunt,  1  Mason,  301,  »  Coffin  v.  Ogden,  18  Wallace,  125, 

1817  ;  Kich  v.  Lippincott,  2  Fisher,  1873. 


CHAP.   III.]  NOVELTY.  49 

elty,  if  that  use  had  ceased  when  the  patent  was  granted,  and 
that  knowledge  was  forgotten  until  called  to  mind  by  the  re- 
invention. Justices  McLEAN  and  DANIEL  dissented  from  that 
conclusion,  and  it  will  probably  always  be  found  impossible  to 
fairly  answer  their  arguments. 

§  72.  Novelty  is  also  negatived  by  evidence  that  even  one 
specimen  of  the  thing  patented  was  made  in  this  country, 
prior  to  its  invention  by  the  patentee,  even  though  it  was  not 
used  prior  to  that  time.1  This  rule  results  from  the  statute 
which  provides  that  things,  in  order  to  be  patentable,  must  not 
have  been  known  or  used  by  others  in  this  country.*  If  the 
prior  article  produced  or  proven,  appears  on  inspection  to  have 
been  identical  with  the  patented  thing,  and  if  it  is  proven  to 
have  been  made  in  this  country  before  the  date  of  the  pat- 
ented invention,  it  follows  that  it  was  known  here  prior  to  that 
time,  and  the  novelty  of  the  patent  is  necessarily  negatived. 
If,  however,  the  identity  of  the  patented  and  the  prior  article 
can  be  known  only  by  actual  use,  and  if  the  prior  article  never 
was  actually  used  till  after  the  date  of  the  patented  invention, 
then  its  prior  making  will  not  negative  novelty.3  In  that  case, 
though  its  existence  was  known  prior  to  the  invention  of  the 
patented  thing,  it  was  not  known  to  be  what  the  patented 
thing  afterward  was.  Knowledge  in  order  to  negative  novelty 
must  include  knowledge  of  the  character,  as  well  as  knowl- 
edge of  the  existence,  of  the  prior  thing. 

§  73.  Negation  of  novelty  is  not  averted  by  the  fact  that 
the  inventor  had  no  knowledge  of  the  anticipating  matter 
when  he  made  the  invention  covered  by  the  patent.4  The 
patent  laws  do  not  reward  people  for  producing  things  which, 
though  new  to  them,  are  old  to  others  in  this  country. 

§  74.  Nor  is  negation  of  novelty  averted  by  the  fact  that 
the  anticipating  substance  was  derived  from  a  different  source 
from  that  which  produced  the  patented  substance,  for  it  does 

1  Corn-Planter  Patent,  23  Wallace,  8  Sayles  v.  Kailway  Co.  4  Fisher, 

220,    1874;  Parker   v.   Ferguson,    1  588,  1871. 

Blatch.  408,  1849  ;  Pitts  v.  Wemple,  4  Many    v.    Sizer,    1    Fisher,   19, 

2  Fisher,  15,  1855.  1849. 

*  Revised  Statutes,  Section  4886. 


50  NOVELTY.  [CHAP.  in. 

not  make  an  old  thing  new  to  derive  it  from  a  new  and  unex- 
pected quarter.1 

§  75.  Questions  of  novelty  are  questions  of  fact."  This 
point  is  very  obvious,  except  in  cases  where  the  prior  thing  is 
a  patent  or  printed  publication.  In  those  cases  it  may  be  sup- 
posed that  questions  of  novelty  are  questions  of  law  arising  on 
the  construction  of  documents.  The  point  has,  however,  been 
settled  by  the  Supreme  Court,  in  a  case  involving  the  consid- 
eration of  a  prior  patent,  and  bearing  with  equal  logical  force 
upon  a  prior  printed  publication.3  In  that  case  it  was  held 
that  the  question  whether  the  novelty  of  a  patent  is  negatived 
by  a  prior  patent, depends  not  upon  the  construction  of  the  lat- 
ter, but  depends  rather  upon  the  outward  embodiment  of  the 
terms  contained  in  the  latter  document  ;  and  that  such  out- 
ward embodiment  is  to  be  properly  sought,  like  the  explana- 
tion of  latent  ambiguities  arising  from  the  description  of  ex- 
ternal things,  by  evidence  in  pais.  The  court  accordingly  in- 
dorsed the  proposition  that  such  questions  belong  to  the  prov- 
ince of  evidence,  and  not  to  that  of  construction  ;  and  said  that 
even  where  no  testimony  is  required  to  explain  the  terms  of 
art  or  the  descriptions  contained  in  the  respective  documents, 
the  question  is  still  to  be  treated  as  a  question  of  fact. 

§  76.  The  burden  of  proof  of  a  want  of  novelty  rests  upon 
him  who  avers  it,  and  every  reasonable  doubt  should  be  re- 
solved against  him.4  It  follows  from  this  declaration  of  the 
Supreme  Court,  and  has  been  expressly  decided  by  several 
Circuit  Courts,  that  novelty  can  only  be  negatived  by  proof 
which  puts  the  fact  beyond  a  reasonable  doubt.5  Under  this 
rule,  a  patent  enjoys  the  same  presumption  of  novelty,  that  an 


1  Badische  Anilin  and  Soda  Fabrik  Fisher,  482,  1871  ;  "Webster  Loom 

v.  Cummins,  4  Bann.  &  Ard.  490,1879.  Co.  v.  Higgins,  4  Bann.  &  Ard.  88, 

1  Battin  v.  Taggert,  17  Howard,  1879  ;  Shirley  v.  Sanderson,  8  Fed. 

74,  1854  ;  Turrill  v.  Railroad  Co.  1  Hep.  908,  1881  ;  Green  v.  French, 

Wallace,  491,  1863.  11  Fed.  Eep.  591,  1882. 

3  Bischoff  v.  Withered,  9  Wallace,  »  Wood  v.  Mill  Co.  4  Fisher,  560, 
812,  1869.  1871  ;  Hawes  v.  Antisdel,  2  Bann.  & 

4  Coffin  v.  Ogden,  18  Wallace,  120,  Ard.  10,  1875  ;  Bignall  v.  Harvey,  5 
1873  ;    Parham    v.   Machine    Co.   4  Bann.  &  Ard.  636,  1880. 


CHAP.   III.]  NOVELTY.  51 

unconvicted  prisoner  does  of  innocence.  Unlike  most  civil  titles, 
it  is  not  liable  to  be  overthrown  by  a  mere  preponderance  of 
evidence.  The  reason  for  this  discrimination,  resides  in  the 
fact  that  patentees  are  generally  strangers  to  the  alleged  trans- 
actions upon  which  want  of  novelty  is  sought  to  be  based. 
In  civil  suits  generally  the  parties  are  both  cognizant  of  the 
matters  in  controversy,  and  therefore  equally  able  to  guard 
against  error  and  perjury  in  the  witnesses.  In  patent  cases,  on. 
the  other  hand,  the  alleged  facts  relied  upon  bj;  defendants  to 
show  want  of  novelty,  are  nearly  always  wholly  outside  the 
knowledge  of  the  plaintiffs.  Those  allegations  may  really  be 
without  any  foundation,  and  the  plaintiffs  be  wholly  ignorant 
of  that  fact.  It  is  easy  for  a  few  bad  or  mistaken  men  to 
testify,  that  in  some  remote  or  unfrequented  place,  they  used  or 
knew  a  thing  substantially  like  the  thing  covered  by  the  pat- 
ent, and  did  so  before  that  thing  was  invented  by  the  paten- 
tee. In  such  a  case  it  may  happen  that  the  plaintiff  can  pro- 
duce nothing  but  negative  testimony  in  reply :  testimony  of 
persons  who  were  conversant  with  the  place  in  question,  at 
the  time  in  question,  and  did  not  see  or  know  the  thing  al- 
leged to  have  been  there  at  that  time.  If  mere  preponderance 
of  evidence  were  to  control  the  issue,  the  affirmative  testimony 
of  a  few  persons,  that  they  did  see  or  know  or  use  a  particular 
thing  at  a  particular  time  and  place,  would  outweigh  the  neg- 
ative testimony  of  many  persons,  that  they  were  at  or  near 
that  place  at  that  time,  and  did  not  see  or  know  or  use  any 
such  thing.  But  such  negative  testimony  may  cast  a  reason- 
able doubt  upon  such  affirmative  evidence,  and  if  it  is  strong 
enough  for  that  purpose  it  will  render  the  latter  unavailing.1 

1  Sayles  v.  Kailway  Co.  4  Fisher,  588,  1871  ;  Washburn  &  Moen  Mfg.  Co. 
v.  Haish,  4  Fed.  Hep.  900,  1880  ;  Green  v.  French,  11  Fed.  Kep.  591,  1882. 


CHAPTER  IY. 

UTILITY. 


77.  Utility  necessary  to  patentabil- 
ity. 

78.  Utility  is  negatived  by  lack  of 
function. 

79.  Perfection  not  necessary  to  util- 
ity. 

80.  Beauty  has  utility. 

81 .  Utility  is  negatived  where  func- 
tion is  evil. 


82.  Functions      which     sometimes 
work  evil,  and  sometimes  work 
good. 

83.  Functions  thought  by  some  to 
be  good,  and  by  others  to  be 
bad. 

84.  Good  functions  in  wrong  places. 

85.  Doubts  relevant  to  utility  to  be 
solved  against  infringers. 


§  77.  IT  is  the  useful  arts  that  Congress  is  authorized  by  the 
.Constitution  to  promote,  and  accordingly  the  statute  includes 
utility  among  the  qualities  which  a  process  or  a  thing  must 
have  in  order  to  be  patentable.1  To  possess  utility,  a  thing  or 
a  process  must  be  capable  of  producing  a  result,  and  that  result 
must  be  a  good  result.  Both  these  elements  inhere  in  the 
meaning  of  the  word  ;  and  they  are  so  distinct  as  to  require 
separate  explanation. 

§  78.  Utility  is  absent  from  all  processes  and  devices  which 
cannot  be  used  to  perform  their  specified  functions,  and  patents 
for  such  subjects  are  therefore  void.9  This  rule  applies  even 
to  cases  in  which,  by  simply  adding  new  elements  to  useless 
contrivances,  highly  useful  inventions  are  produced. 

In  Burrall  v.  Jewett s  the  patent  covered  the  cylinder  of  a 
threshing-machine,  having  rows  of  teeth  inserted  in  its  con- 
vex surface  and  revolving  within  a  barrel  which  had  no  teeth. 
The  contrivance  was  confessedly  useless.  After  the  patent 
for  it  was  granted,  the  patentee,  or  some  other  person,  by  sim- 
ply inserting  rows  of  teeth  in  the  concave  surface  of  the  barrel, 


1  Revised  Statutes,  Section  4886. 
"Bliss   v.   Brooklyn,    10    Blntch. 
622,  1873  ;  Kowe  v.  Blanchard,   18 


Wisconsin,  465,  1864. 

8  Burrall  v.  Jewett,  2  Paige,  143, 
1830. 


CHAP.   IV.]  UTILITY.  53 

produced  the  successful  threshing-machine,  which  has  every- 
where superseded  the  ancient  flail.  The  law  applicable  to 
these  facts  was  stated  by  Chancellor  WAL WORTH  in  the  follow- 
ing terms  :  "  The  patent  is  void  if  the  machine  will  not  an- 
swer the  purpose  for  which  it  was  intended,  without  some  ad- 
dition, adjustment,  or  alteration,  which  the  mechanic  who  is  to 
construct  it  must  introduce  of  his  own  invention,  and  which 
had  not  been  invented  or  discovered  by  the  patentee  at  the 
time  his  patent  was  issued." 

In  Bliss  v.  Brooklyn  the  patent  covered  a  certain  hose- 
coupling.  The  contrivance  was  worthless,  because  it  proved 
on  trial  to  be  inoperative.  The  subsequent  addition  of  a  lug 
to  one  of  its  parts,  transformed  the  coupling  into  a  useful  in- 
vention. Judge  BENEDICT  nevertheless  held  the  patent  to  be 
invalid  for  want  of  utility. 

§  79.  If,  however,  a  device  performs  a  good  function, 
though  but  imperfectly,  the  utility  of  that  device  is  not  nega- 
tived by  the  fact  that  it  is  susceptible  of  improvement,  which 
will  make  it  operate  much  better,1  nor  by  the  fact  that  some 
prior  invention  performed  the  same  function  quite  as  well/ 
or  even  performed  it  with  superior  excellence.3  Nor  is  utility 
negatived  by  later  inventions  which  are  so  much  superior  to 
the  patented  process  or  thing,  that  they  entirely  superseded 
the  use  of  the  latter.4  Indeed,  patents  are  never  held  to  be 
void  for  want  of  utility,  merely  because  the  things  covered  by 
them  perform  their  functions  but  poorly. "  In  such  cases  no 
harm  results  to  the  public  from  the  exclusive  right,  because 
few  will  use  the  invention,  and  because  those  who  do  use  it 
without  permission,  will  seldom  or  never  be  obliged  to  pay  for 
that  use,  anything  beyond  the  small  benefit  they  may  really 
have  realized  therefrom. 


1  Wheeler  v.  Keaper  Co.  10  Blatch.  *  Kailway  Co.  v.  Sayles,  97  U.  S. 

189,  1872.  559,   1878  ;   Poppenhusen   v.   Comb 

*  Seymour  v.  Osborne,  11  Wallace,  Co.  2  Fisher,   72,  1858  ;  McConib  u. 

549,  1870  ;  Shaw  v.  Lead  Co.  11  Fed.  Ernest,  1  Woods,  203,  1871. 

Rep.  715,  1882.  *  Vance    v.   Campbell,    1    Fisher, 

8  Bell  v.  Daniels,  1   Fisher,  375,  485,    1859 ;    Conover    v.    Koach,   4 

1858.  Fisher,  16,  1857. 


54:  UTILITY.  [CHAP,  rv 

§  80.  Utility  is  not  negatived  by  the  fact  that  the  manufact- 
ure covered  by  the  patent  has  no  function  except  to  decorate 
the  object  to  which  it  is  designed  to  be  attached.1  In  such 
cases  utility  resides  in  beauty.  Whatever  is  beautiful  is  use- 
ful, because  beauty  gives  pleasure,  and  pleasure  is  a  kind  of 
happiness,  and  happiness  is  the  ultimate  object  of  the  use  of 
all  tilings. 

§  81.  Utility  is  negatived  if  the  function  performed  by  an 
invention  is  injurious  to  the  morals,  the  health,  or  the  good 
order  of  society.3  An  invention  to  improve  the  art  of  forgery, 
or  one  to  facilitate  the  spread  of  a  contagious  disease,  or 
one  to  render  air  or  water  intoxicating,  would  of  course 
be  unpatentable  for  want  of  utility.  The  more  completely 
such  an  invention  could  perform  its  function,  the  more  objec- 
tionable it  would  be  in  this  respect. 

§  82.  An  important  question  relevant  to  utility  in  this  as- 
pect, may  hereafter  arise  and  call  for  judicial  decision.  It  is 
perhaps  true,  for  example,  that  the  invention  of  Colt's  revolver 
was  injurious  to  the  morals,  and  injurious  to  the  health,  and 
injurious  to  the  good  order  of  society.  That  instrument  of 
death  may  have  been  injurious  to  morals,  in  tending  to  tempt 
and  to  promote  the  gratification  of  private  revenge.  It  may 
have  been  injurious  to  health,  in  that  it  is  very  liable  to  acci- 
dental discharge,  and  to  thereby  cause  wounds,  and  even  homi- 
cide. It  may  also  have  been  injurious  to  good  order,  especially 
in  the  newer  parts  of  the  country,  because  it  facilitates  and  in- 
creases private  warfare  among  frontiersmen.  On  the  other 
hand,  the  revolver,  by  furnishing  a  ready  means  of  self- 
defence,  may  sometimes  have  promoted  morals  and  health  and 
good  order.  By  what  test,  therefore,  is  utility  to  be  deter- 
mined in  such  cases  ?  Is  it  to  be  done  by  balancing  the  good 
functions  with  the  evil  functions  ?  Or  is  everything  useful 
within  the  meaning  of  the  law  if  it  can  be  used  to  accomplish 
a  good  result,  though  in  fact  it  is  oftener  used  to  accomplish  a 
bad  one  ?  Or  is  utility  negatived  by  the  mere  fact  that  the 

1  Magic  Ruffle  Co.  r.  Douglas,  2  *  Bedford  v.  Hunt,  1  Mason,  301, 
Fisher,*  330,  1863.  1817. 


CHAP.  IV.]  UTILITY.  55 

thing  in  question  is  sometimes  injurious  to  morals,  or  to 
health,  or  to  good  order  ?  The  third  hypothesis  cannot  stand, 
because  if  it  could,  it  would  be  fatal  to  patents  for  steam-en- 
gines, telegraphs,  electric  lights,  and  indeed  many  of  the 
noblest  inventions  of  the  nineteenth  century.  The  first  hypoth- 
esis cannot  stand,  because  if  it  could  it  would  make  the  valid- 
ity of  the  patents  to  depend  on  a  question  of  fact,  to  which  it 
would  often  be  impossible  to  give  a  reliable  answer.  The 
second  hypothesis  is  the  only  one  which  is  consistent  with  the 
reason  of  the  case,  and  with  the  practical  construction  which 
the  courts  have  given  to  the  statutory  requirement  of  utility. 

§  83.  Another  question  relevant  to  utility  of  function  will 
sooner  or  later  demand  the  attention  of  counsel  and  of  courts. 
A  particular  invention  may  invariably  perform  one  specific 
function,  which  function  is  deemed  good  in  some  quarters,  and 
in  other  quarters  is  thought  to  be  bad.  The  function  per- 
formed by  a  newly  invented  smoking-pipe,  if  it  increased  the 
prevalence  of  smoking,  would  be  thought  by  many  persons  to 
be  only  evil,  and  that  continually  :  would  be  deemed  by  many 
moralists  to  be  injurious  to  the  morals,  and  by  many  physicians 
to  be  injurious  to  the  health  of  society.  James  I.  would 
doubtless  have  refused  a  patent  for  such  an  invention,  unless 
by  granting  one,  he  could  have  diminished  its  use.  On  the 
other  hand,  there  are  many  persons  who  would  regard  such  an 
invention  as  truly  useful.  Federal  judges  would  be  found 
among  both  parties,  and  an  entire  difference  of  personal  opinion 
on  the  point,  might  perhaps  exist  among  the  justices  of  the 
Supreme  Court  themselves.  Personal  opinion  cannot,  there- 
fore, control  the  decision  of  such  a  question,  for  if  it  could, 
there  would  be  no  stability  to  the  jurisprudence  of  the  sub- 
ject. JS  or  ought  former  custom  to  be  the  criterion,  for  if  it 
were,  each  age  would  be  hampered  by  a  prior  and  lower  civili- 
zation. Science  may  hereafter  demonstrate  the  uniform  hurt- 
fulness  of  smoking,  and  when  it  does,  the  courts  can  hardly  ad- 
judge it  to  be  useful  on  the  ground  that  millions  of  men  for- 
merly smoked.  It  seems,  therefore,  that  in  such  cases  of 
divided  personal  opinion  relevant  to  the  utility  of  a  particular 
result,  the  only  criterion  of  decision  is  the  average  public  sen- 


56  UTILITY.  [CHAP.  iv. 

timent  of  the  time  when  the  question  arises.  Accordingly, 
the  courts  at  present  uphold  patents  which  relate  to  tobacco, 
and  will  probably  always  sustain  the  utility  of  inventions 
which  perform  functions  that  average  public  sentiment  is  will- 
ing to  have  performed. 

§  84.  Utility  is  negatived  by  the  fact  that  the  patented  pro- 
cess or  thing  is  injurious  to  the  thing  to  which  it  is  applica- 
ble,1 and  also  by  the  fact  that  the  function  performed  by  the 
patented  part  of  a  machine,  though  good  in  itself,  is  injurious 
to  the  utility  of  the  machine  as  a  whole.5  The  first  of  these 
points  is  well  illustrated  by  the  first  case  cited  in  this  section  : 
a  case  based  on  a  patent  for  a  process  of  treating  leather  to  an 
application  of  fat  liquor.  The  second  point  is  equally  well 
illustrated  by  the  second  case  :  a  case  based  on  a  patent  for  a 
locomotive  spark  arrester.  To  arrest  sparks  is  in  itself  a  good 
thing  to  do,  but  where  it  must  be  done  in  such  a  way  as  to 
stop  or  seriously  retard  the  locomotive,  it  is  not  desirable  to  at- 
tempt it.  Therefore  a  device  which  would  arrest  sparks,  but 
only  at  the  expense  of  retarding  the  locomotive  from  the 
smoke-pipe  of  which  they  issued,  was  rightly  held  to  be 
wanting  in  utility. 

§85.  A  patent  is  prima  facie  evidence  of  utility,3  and 
doubts  relevant  to  the  question  should  be  resolved  against  in- 
f  ringers,4  because  it  is  improbable  that  men  will  render  them- 
selves liable  to  actions  for  infringement,  unless  infringement  is 
useful.5 

1  Klein  v.  Kussell,  19  Wallace,  433,  483,  1859. 

1873.  4  Whitney  v.  Mowry,  4  Fisher, 

»  Wilton  v.  Railroad  Co.,  1  Bright-  215,  1870. 

ley's  Federal  Digest,  618,  1849.  5  Lehnbenter  v.  Holthaus,  105 

» Vance    v.   Campbell,   1    Fisher,  U.  8.  94,  1881. 


CHAPTER  Y. 

ABANDONMENT. 


86.  The  several   sorts  of  abandon- 
ment. 

87.  Abandonment  of  inventions. 

88.  Actual  abandonment  of  inven- 
tions. 

89.  Actual  abandonment  by  express 
declaration. 

90.  Actual  abandonment  by  formal 
disclaimer. 

91.  Actual    abandonment   resulting 
from  laches  before  application. 

92.  Actual    abandonment    resulting 
from    laches    after    application 
and  before  issue  of  letters  pat- 
ent. 

93.  Constniotive   abandonment   be- 
fore application. 

94.  "Public  use,"  denned  and  de- 
lineated. 

95.  Experimental  use. 

9G.  "  On  sale,"  delineated  and  de- 
fined. 

97.  Sale  of  inchoate  right  to  a  pat- 
ent. 


98.  Degree  of    identity  necessarily 
involved  between  the  thing  con- 
structively abandoned  and   the 
thing  patented. 

99.  Making,  works  no  constructive 
abandonment. 

100.  Public    knowledge    works     no 
constructive  abandonment. 

101.  Public  use  or  sale  in  a  foreign 
country. 

102.  Consent. 

103.  Constructive  abandonment  af- 
ter application,  and  before  issue 
of  letters  patent. 

104.  Eules  of  constructive  abandon- 
ment are  inflexible. 

105.  Surrender  of  letters  patent. 

106.  Abandonment  of  invention  af- 
ter letters  patent,  unknown  to 
the  law. 

107.  Acquiescence  in  unlicensed  use 
of  patented  invention. 

108.  Questions  of  abandonment  are 
questions  of  fact. 


§  86.  AN  inventor  may  abandon  an  unsuccessful  endeavor 
to  make  an  invention  ;  or  having  made  an  invention,  lie  may 
abandon  it  to  the  public  ;  or  having  made  an  invention  and 
having  applied  for  a  patent  thereon,  he  may  abandon  that  ap- 
plication without  abandoning  that  invention.  Transactions  of 
the  first  sort  are  commonly  called  unsuccessful  abandoned  ex- 
periments. They  confer  no  rights  upon  those  who  make 
them,  and  they  affect  no  rights  of  any  other  person.  Transac- 
tions of  the  third  sort  are  treated  in  the  chapter  on  applica- 


58  ABANDONMENT.  [CHAP.  V. 

tions  :  the  sixth  chapter  of  this  book.  Transactions  of  the 
second  sort  require  treatment  in  respect  that  they  are  inven-  • 
tions  ;  and  also  require  separate  treatment  in  respect  that  they 
are  abandoned.  Treatment  of  the  first  sort  takes  no.  account 
of  the  fact  of  abandonment,  because  abandoned  inventions 
have  the  same  effect  on  the  rights  of  subsequent  inventors 
that  they  would  have  if  they  had  not  been  abandoned.  That 
subject,  therefore,  does  not  belong  to  this  chapter.  It  is 
treated  in  the  chapters  on  invention  and  letters  patent,  where 
the  state  of  the  art  is  a  very  important  factor  in  the  discus- 
sion ;  and  also  in  the  chapter  on  novelty,  where  anticipa- 
tion is  the  point  of  inquiry.  Treatment  of  the  second  sort  in- 
dicated above  is  the  special  function  and  scope  of  this 
chapter.  Abandoned  inventions  are  here  considered  with  re- 
gard to  the  effect  abandonment  of  them  has  upon  the  rights 
of  their  inventors,  and  with  regard  to  the  rules  by  means  of 
which  abandonment  is  to  be  affirmed  or  denied  in  particular 
cases. 

§  87.  Abandonment  of  an  invention  may  be  actual,  or  it 
may  be  constructive.  It  is  actual  when  it  is  the  result  of  in- 
tention. It  is  constructive  when  it  is  the  result  of  some 
statute  which  operates  regardless  of  the  intention  of  the  in- 
ventor. The  two  sorts  require  and  will  receive  separate  treat- 
ment in  this  chapter,  but  there  are  some  points  of  fact  and  of 
law  which  apply  equally  to  both.  Either  kind  may  occur  be- 
fore any  application  for  a  patent  is  made,  or  may  occur  after 
such  an  application,  and  before  any  letters  patent  are  issued. 
So  also,  either  actual  or  constructive  abandonment  of  an  in- 
vention, is  fatal  to  the  validity  of  any  patent  that  may  after- 
ward be  granted  therefor.  The  inchoate  right  to  a  patent 
when  once  abandoned  can  never  be  resumed,  for  where  gifts 
are  once  made  to  the  public,  they  become  absolute  and  irrevo- 
cable.1 

§  88.  Actual  abandonment  of  an  invention  occurs  whenever 
there  is  an  entire  relinquishment  of  all  expectation  of  securing 

1  Pennock  v.  Dialogue,  2  Peters,  1,  Jar  Co.  v.  Wright,  94  U.  S.  96, 1876  ; 
1829  ;  Kendall  v.  Winsor,  21  How-  Planing  Machine  Co.  v.  Keith,  101 
ard,  328,  1858  ;  Consolidated  Fruit  U.  S.  484,  1879. 


CHAP.  V.]  ABANDONMENT.  59 

a  patent  therefor.  Such  a  relinquishment  may  be  shown  by 
direct,  or  by  circumstantial  evidence.  It  may  be  predicated 
on  things  said,  or  on  things  done  by  the  inventor,  or  it  may  be 
predicated  on  his  omission  or  delay  to  do  what  the  law  re- 
quires to  be  done  in  order  to  secure  letters  patent. 

§  89.  An  inventor  abandons  his  invention  to  the  public 
when  he  makes  an  express  declaration  to  that  effect. ' 

In  the  case  of  Pitts  v.  Hall,"  Justice  NELSON  charged  the 
jury  to  the  contrary  of  this  rule,  but  it  is  believed  that  he 
never  was  followed  in  this  respect  by  any  other  Federal  judge. 
Subsequently  Justice  CURTIS  charged  the  jury,  in  Kendall  v. 
Winsor,  that .  abandonment  might  be  shown  by  declarations 
or  conduct,  and  the  Supreme  Court  held  that  Justice  CUKTIS'S 
instruction  was  in  strict  conformity  with  the  true  principle. 
The  Supreme  Court  also  said  in  that  case  :  "  It  is  the  unques- 
tionable right  of  every  inventor,  to  confer  gratuitously  the  ben- 
efits of  his  ingenuity  upon  the  public,  and  this  he  may  do  by 
express  declaration." 

§  90.  So  also  an  inventor  will  no  doubt  be  held  to  abandon 
a  particular  invention,  when  he  formally  disclaims  it  in  an 
application  for  a  patent  for  some  other  invention  ;  3  and  by 
sameness  of  reasoning,  when  he  formally  disclaims  it  in  a  sep- 
arate paper  filed  for  that  purpose.  But  no  abandonment  re- 
sults from  the  mere  fact  that  the  inventor  described  the  in- 
vention in  an  application  for  a  patent,  without  either  claiming 
or  disclaiming  the  same.4 

§  91.  Abandonment  is  also  proven  by  evidence  that  the  in- 
ventor is  chargeable  with  laches,  relevant  to  applying  for  a 
patent,5  or  relevant  to  prosecuting  or  renewing  his  application 
after  it  has  been  rejected  or  withdrawn.6  Long  delay  consti- 
tutes laches,  unless  there  was  some  reason  which  rendered  that 
delay  consistent  with  an  expectation  to  finally  secure  a  patent. 

1  Kendall  v.  Winsor,  21  Howard,      83,  1854. 

328,  1858.  s  Consolidated    Fruit    Jar  Co.  v. 

2  Pitts  v.  Hall,  2  Blatch.  237,  1851.      Wright,  94  U.  S.  96,  1876. 

8  Leggett  v.  Avery,  101  U.  S.  259,  «  Planing  Machine  Co.  v.  Keith, 
1879.  101  U.  S.  484,  1879. 

4Battin  v.   Taggert,  17   Howard, 


60  ABANDONMENT.  [CHAP.  V. 

Extreme  poverty  of  the  inventor  is  such  a  reason  ,• '  but 
poverty  which  was  not  sufficient  to  prevent  the  inventor  from 
securing  patents  on  other  inventions  is  not  such  a  reason.8 
The  fact  that  during  all,  or  during  much  of  the  delay  the  in- 
ventor was  within  the  so-called  Southern  Confederacy,  and 
therefore  unable  to  apply  for  a  United  States  patent,  has  also 
been  repeatedly  held  to  be  such  a  reason.3  Mental  disorder 
which  was  great  enough  to  generally  incapacitate  the  inventor 
for  business  during  the  time  of  the  delay,  is  also  such  a  fact  as 
will  negative  laches,*  and  physical  disorder  ought  under  the 
same  circumstances  to  have  the  same  effect. 

Neither  can  laches  be  predicated  on  any  delay  which  was 
caused  by  the  experiments  of  the  inventor  in  making  or  per- 
fecting his  invention,6  nor  upon  any  neglect  of  which  his 
patent  solicitor  was  guilty,'  nor  upon  any  delay  of  action  on 
the. part  of  public  officers  or  courts.7  Nor  does  delay  consti- 
tute laches,  when  it  was  caused  by  the  fact  that  the  invention 
could  only  be  used  in  connection  with  one  covered  by  another 
patent,  and  by  the  fact  that  the  inventor  failed  to  make  any 
arrangement  with  the  owner  of  that  patent  for  the  joint  use  of 
the  two  inventions.8  If,  under  such  circumstances,  the  in- 
ventor waits  till  the  older  patent  expires  before  securing  his 
patent,  his  delay  is  amply  accounted  for  by  his  desire  to  enjoy, 
for  the  full  statutory  term  of  a  patent,  the  practical  exclusive 
right  to  his  invention.  To  predicate  abandonment  on  delay 
suffered  for  such  a  purpose  would  be  logically  impossible. 

§  92.  Where  an  application  for  a  patent  is  rejected  when  it 
ought  to  be  allowed,  and  where  the  inventor  long  acquiesces  in 
that  erroneous  rejection,  supposing  it  to  be  right,  he  cannot,  on 

J  Smith  v.  Dental  Vulcanite  Co.  5  Agawam  Co.  v.  Jordan,  1  Wal- 

93  U.  S.  491,  1876.  lace,  583,  1868. 

8  U.  8.  Kifle  and  Cartridge  Co.  v.  8  Birdsall  v.  McDonald,  1  Bnnn.  <fc 

Whitney  Anns  Co.  2  Bann.  &  Ard.  Ard.  165,  1874  ;  Howes  v.  McNeal, 

493,  1877.  3  Bann.  &  Ard.  376,  1878. 

3  Johnsen  v.  Passman,  1  Woods,  *  Adams  v.  Jones,  1  Fisher,  530, 
142,    1871  ;    Knox    v.    Loweree,    1  1859  ;  Sayles  v.  Railroad  Co.  2  Fish- 
Bann.  &  Ard,  589,  1874.  er,  523,  1865. 

4  Ballard  v.   Pittsburgh,  12   Fed.  8  Webster  v.  New  Brunswick  Car- 
»ep.  784,  1882.  pet  Co.  1  Bann.  &  Ard.  84,  1874. 


CHAP.  V.]  ABANDONMENT.  Gl 

receiving  better  information,  renew  his  application  or  file  an- 
other, and  thereupon  secure  a  valid  patent.1  In  such  a  case 
the  desire  of  the  inventor  to  secure  a  patent  may  never  have 
left  him,  but  there  was  doubtless  a  complete,  though  perhaps 
reluctant,  relinquishment  of  all  expectation  of  so  doing.  An 
abandonment  of  an  invention  is  not  less  real  because  it  was 
unnecessary. 

§  93.  Constructive  abandonment  of  inventions  prior  to  ap- 
plications for  letters  patent,  is  the  offspring  of  certain  statutes, 
the  earliest  of  which  was  the  Patent  Act  of  1836. 2  Sections 
6  and  7  of  that  Act  authorized  the  Commissioner  of  Patents  to 
grant  a  patent  only  where  the  alleged  invention  had  not  been 
in  public  use  or  on  sale  with  the  applicant's  consent  or  allow- 
ance, prior  to  the  application.  Section  15  provided  that  in 
suits  for  infringement,  judgment  should  be  rendered  for  the 
defendant,  if  he  should  have  pleaded  and  proved  that  the  thing 
patented  had  been  in  public  use  or  on  sale,  with  the  consent 
or  allowance  of  the  patentee,  before  his  application  for  a  pat- 
ent. Section  7  of  the  Patent  Act  of  1 839  3  provided  that  no 
patent  should  be  held  to  be  invalid  by  reason  of  purchase,  sale, 
or  use  of  the  thing  covered  thereby,  prior  to  the  application 
for  a  patent,  except  on  proof  of  abandonment  of  such  inven- 
tion to  the  public,  or  on  proof  that  such  purchase,  sale,  or  use 
had  been  for  more  than  two  years  prior  to  such  application  for 
a  patent.  This  provision  of  the  Act  of  1839  was  restrictive 
of  the  enactments  just  cited  from  the  statute  of  1S36.4  Its 
effect  was  to  amend  those  enactments  in  the  same  way  that  it 
would  have  done,  if  it  had  simply  inserted  the  words  "  for 
more  than  two  years"  in  the  proper  place  in  their  phrase- 
ology.6 This  phrase  "  for  more  than  two  years "  means 


1  Marsh  v.  Commissioner,  3  Bis-  8  American  Hide  and  Leather  Split- 
Bell,  321,  1872.  ting  Machine  Co.  v.  Machine  Co. 

4  5  Statutes  at  Large,  Ch.  357,  p.  4  Fisher,  290,  1870  ;  Andrews  v. 

117.  Carman,  13  Blatch.  315,  1876  ;  Kel- 

3  5  Statutes  at  Large,  Ch.  88,  p.  leher  v.  Darling,  3  Bann.  &  Arcl.  449, 
354.  1878  ;  Draper  v.  Wattles,  3  Bann.  & 

4  Campbell  v.  New  York,  9  Fed.  Ard.  618,  1878. 
Eep.  504,  1881. 


62  ABANDONMENT.  [CHAP.  V. 

earlier  than  two  years,1  so  that  the  law  which  the  two  statutes 
establish  on  the  subject  is  expressed  in  the  following  sentence. 
A  patent  is  void  if  the  invention  covered  thereby  was  in  pub- 
lic use  or  on  sale,  with  the  consent  of  the  inventor,  earlier 
than  two  years  before  the  application  for  that  patent.2  That 
continued  to  be  the  law  of  the  United  States  on  the  subject 
till  July  8,  1870.  It  will  hereafter  be  in  order  to  explain  the 
modification  of  that  law  which  was  contained  in  the  Consoli- 
dated Patent  Act  of  the  latter  date,  and  is  also  contained  in 
the  Revised  Statutes,  but  attention  may  at  present  be  given  to 
the  judicial  decisions  which  grew  up  around  the  earlier  enact- 
ments. 

§94.  What  is  "public  use,"  within  the  meaning  of  the 
statute  ?  This  question  has  now  received  light  from  a 
sufficient  number  of  decisions,  affirming  or  negativing  the  fact 
of  public  use  in  particular  cases,  to  make  it  possible  to  deduce 
a  moderately  precise  answer  from  judicial  authorities. 

If  the  inventor  allows  his  invention  to  be  used  by  other  per- 
sons generally,  either  with  or  without  compensation,  then  it 
will  be  in  public  use  within  the  meaning  of  the  statute.3 

If  the  inventor  uses  his  invention  for  profit,  and  not  by  way 
of  experiment,  that  also  is  a  public  use,4  unless  actual  use  re- 
sulting in  profit  is  necessary  to  show  the  inventor  how  to  per- 
fect his  invention,  and  unless  he  does  perfect  it  in  accordance 
with  the  teachings  of  such  use."  Nor  will  the  fact  that  the 
inventor  is  but  an  employe  in  the  place  where  he  uses  his  in- 
vention, or  the  fact  that  the  profit  goes  primarily  to  his  em- 
ployer, oust  the  operation  of  this  rule.8 

To  constitute  public  use,  it  is  not  necessary  that  more  than 
one  specimen  of  the  thing  invented  should  have  been  publicly 
used,'  nor  that  more  than  one  person  should  have  known  of 

1  Consolidate  3  Fruit  Jar  Co.  v.  U.  S.  137,  1877. 

Wright,  94  U.  S.  94,  1876.  5  Sprague  v.  Mfg.  Co.  12  Fed. 

*  Elizabeth  v.  Pavement  Co.  97  Eep.  724,  1882. 

U.  S.  134,  135,  1877  «  Worley  v.  Tobacco  Co.  194  U.  S. 

3  Elizabeth    v.   Pavement  Co.  97      340,  1881. 

U.  S.  135,  1877  ;  Andrews  v.  Hovey,  '  Consolidated    Frnit  Jar  Co.   v. 

16  Fed.  Kep.  393,  1883.  Wright,  94  U.  S.  94,  1876  ;  Jones  v. 

4  Elizabeth  v.   Pavement  Co.   97      Barker,  11  Fed.  Kep.  597,  1882. 


CHAP.   V.]  ABANDONMENT.  63 

that  use.1  Nor  is  it  necessary  to  public  use  that  the  article 
used  could  have  been  seen  by  the  public  eye,  if  the  ordinary 
use  of  such  articles  is  veiled  from  view.2 

§  95.  Experimental  use  is  never  public  use  within  the  mean- 
ing of  the  statute,  if  it  is  conducted  in  good  faith  for  the  pur- 
pose of  testing  the  qualities  of  the  invention,  and  for  no  other 
purpose  not  naturally  incidental  to  that.  In  such  a  case  it  is 
immaterial  whether  the  experimental  use  disclosed  a  necessity 
for  improvement,  or  disclosed  no  such  necessity  ;  and  is  also 
immaterial  whether  the  use  was  conducted  with  secrecy  or  not. 
It  may  indeed  have  been  had  in  the  open  air,  and  have  con- 
tinued every  day  for  several  years,  and  have  been  known  to 
hundreds  of  persons,  and  have  incidentally  inured  to  the  profit 
of  the-  user  and  of  the  public,  and  still  not  be  a  public  use 
within  the  meaning  of  the  statute,  if  the  nature  of  the  inven- 
tion was  such  that  only  long  continued  out-door  use  could 
show  whether  the  invention  possessed  utility,  or  show  in  what 
respects,  if  any,  it  required  to  be  improved.3  The  liberal 
ideas  which  underlie  the  decision  just  cited  will  doubtless  be 
applied  to  every  variety  of  invention,  as  occasion  serves,  and 
will  be  found  elastic  enough  to  cover  every  meritorious  case. 
Indeed,  Judge  LOWELL  has  gone  still  further  in  the  direction 
of  liberally  allowing  scope  to  experimental  use,  and  has  de- 
cided that  such  use  is  not  public  use  within  the  meaning  of 
the  law,  where,  in  order  to  test  its  comparative  as  well  as  its 
absolute  utility,  and  in  order  to  convince  others  of  its  merits, 
an  inventor  allows  them  to  use  his  invention  after  he  has  him- 
self become  satisfied  that  it  is  useful.4 

§  96.  What  is  being  "  on  gale,"  within  the  meaning  of  the 
statute  ?  The  answer  to  this  question  also,  can  now  be  accu- 
rately delineated  in  nearly  or  quite  all  of  its  boundaries. 

A  single  instance  of  sale  of  one  specimen  of  the  thing  in- 
vented is  enough  to  constitute  putting  the  invention  on  sale,' 

i  Egbert  v.  Lippmann,  104  U.  S.       U.  S.  134,  1877. 
336,  1881.  4  Sinclair  v.  Backus,  5  Bann.  &  Ard. 

*  Egbert  v.  Lippmann,  104  U.  S.       81,  1880. 
336,  1881.  6  Consolidated    Fruit   Jar  Co.   v. 

»  Elizabeth  v.   Pavement  Co.   97      Wright,  94  U.  S.  94,  1876. 


64  ABANDONMENT.  [CHAP.  V. 

and  indeed  a  device  will  be  on  sale  within  the  meaning  of  the 
law,  if  it  is  offered  for  sale,  whether  any  specimen  of  it  is  actu- 
ally sold  or  not.1  If,  however,  the  nature  of  the  invention  is 
such  that  the  inventor  is  obliged  to  put  it  into  the  hands  of 
others  for  crucial  experiment,  he  may  sell  specimens  to  those 
others  for  that  purpose,  and  such  a  sale  will  not  be  obnoxious 
to  the  law  now  under  consideration.1  But  if  the  invention 
could  have  been  tested  by  the  inventor  on  his  own  premises,  as 
well  as  by  any  one  there  or  elsewhere,  then  either  an  absolute 
or  a  conditional  sale  of  a  specimen  of  the  thing  invented,  will 
be  putting  the  invention  on  sale,  unless  there  is  unequivocal 
evidence  that  the  sale  was  made  for  the  purpose  of  experi- 
mental use.3 

§  97.  An  assignment  of  the  inchoate  right  to  an  invention, 
is  not  such  a  sale  as  will  be  obnoxious  to  the  statute  now  under 
explanation."  So  far  from  furnishing  evidence  of  abandon- 
ment, the  sale  of  the  inchoate  right  to  a  patent  indicates  an  ex- 
pectation that  such  a  patent  will  be  obtained,  and  that  right  be 
thus  translated  into  a  legal  title. 

§  98.  Precise  identity  between  the  thing  covered  by  the 
patent,  and  the  thing  which  the  inventor  allowed  to  be  in 
public  use  or  on  sale  more  than  two  years  before  he  applied 
for  that  patent,  is  not  necessary  to  constitute  constructive  aban- 
donment of  the  invention  covered  by  the  latter.  It  is  enough 
if  the  two  devices  are  substantially  the  same,6  but  it  is  not 
enough  that  the  two  devices  perform  the  same  function  and 
are  somewhat  similar  in  construction  and  in  mode  of  opera- 
tion.8 

§  99.  No  constructive  abandonment  results  from  any  mere 
making  of  a  specimen  of  an  invented  thing,  whether  with  or 
without  the  consent  of  the  inventor,  and  whether  more  or  less 


1  Plimpton  v.   Winslow,  14  Fed.  *  Elm  City  Co.  v.  Wooster,  6  Fisher, 
Rep.  921,  1883.  452,  1873. 

2  Graham  v.  McCormick,  5  Bann.  5  Hall  v.  Macneal,  107  TJ.  S.    90, 
&  Arcl.   244,  1880  ;  Graham  v.  Mfg.  1882  ;  Theberath  v.   Trimming  Co. 
Co.  11  Fed.  Rep.  142,  1880.  15  Fed.  Rep.  251,  1883. 

3  Henry  v.  Soapstone  Co.  5  Bann.  6  Draper  v.   Wattles,  3  Bann.   & 
&  Ard.  108,  1880.  Ard.  618,  1878. 


CHAP.   V.]  ABANDONMENT.  65 

than  two  years  before  his  application  for  a  patent.1  But 
where  an  invention  consists  in  a  process  of  making  a  thing,  the 
making  of  a  specimen  of  that  thing,  by  that  process,  is  a  use  of 
that  process,  and  is  therefore  subject  to  the  rules  which  govern 
using,  and  not  to  that  which  applies  to  making  only. 

§  100.  Public  knowledge  of  an  invention,  acquired  with  the 
consent  of  the  inventor,  prior  to  his  application  for  a  patent, 
was  formerly  fatal  to  the  validity  of  any  patent  granted  for 
that  invention.  The  Patent  Act  of  1793  *  provided  that  to  be 
patentable  a  thing  must  not  have  been  known  before  the  mak- 
ing of  an  application  for  a  patent  thereon.  The  Supreme 
Court  construed  that  enactment  to  mean  only  that  the  inven- 
tion must  not  have  been  known  to  the  public  with  the  consent 
of  the  inventor.3  The  Patent  Act  of  1836  repealed  all  prior 
statutes  on  the  subject  of  patents,  and  did  not  provide  that  any 
unfavorable  effect  on  an  inventor's  rights  should  result  from 
public  knowledge  of  his  invention,  acquired  at  any  time  after 
its  production  by  him.4  Xor  has  any  later  statute  made  any 
such  provision.  Since  1836  there  has,  therefore,  been  no  rea- 
son for  an  inventor  to  keep  his  invention  secret,  unless  he  pro- 
posed to  rely  upon  secrecy,  and  not  upon  a  patent,  for  his 
profits,  or  unless  he  feared  that  some  other  person,  obtaining 
knowledge  of  the  invention,  would  falsely  claim  it  as  his  own. 

§  101.  A  public  use  or  a  sale  of  a  specimen  of  a  newly  in- 
vented thing,  occurring  in  any  foreign  country  after  its  inven- 
tion by  an  applicant  for  an  American  patent,  but  more  than 
two  years  before  his  application  is  made,  will  have  the  same 
effect  upon  such  a  patent,  as  it  would  have  had  if  that  public 
use  or  that  sale  had  occurred  in  the  United  States.  That  part 
of  Section  4886  of  the  Revised  Statutes  which  treats  of  public 
use  or  sale  'of  a  thing  after  its  invention  by  an  applicant,  is  not 
limited  to  this  country  ;  as  that  part  is  which  treats  of  knowl- 
edge or  use  by  others  of  that  thing  before  its  invention  by  the 
applicant.  It  is  true  that  Section  4920,  which  provides  for 

1  Comstock  v.  Sandusky  Seat  Co.  3Pennocku.  Dialogue,  2  Peters,  18, 

3  Bann.  &  Ard.  188,  1878.  1829. 

9  1  Statutes  at  Large,  Ch.  11,  Sec-  4  Elizabeth  v.  Pavement  Co.  97 

tion  1,  p.  318.  U.  S.  13G,  1877. 


66  ABANDONMENT.  [CHAP.  V. 

certain  defences  to  infringement  suits,  provides  tliat  a  defend- 
ant may  give  notice  and  prove  that  the  invention  had  been  in 
public  use  or  on  sale  in  this  country  more  than  two  years  be- 
fore an  application  for  a  patent,  and  does  not  provide  that  he 
may  give  notice  and  prove  that  any  such  sale  or  use  occurred 
elsewhere.  But  it  is  also  true  that  Section  4920  does  not  enu- 
merate all  the  defences  that  may  be  made  to  patent  suits.  It 
merely  provides  what  defences  maybe  made  under  the  general 
issue,  and  it  leaves  a  larger  number  to  be  set  up  in  special 
pleas.  That  section  does  not,  therefore,  negative  or  tend  to 
negative  the  effect  on  this  subject  of  Section  4886. 

§  102.  The  last  preceding  nine  sections  of  this  chapter  set 
forth  the  law  of  which  they  treat,  as  that  law  existed  between 
the  approval  of  the  Patent  Act  of  1839  and  the  approval  of 
the  Consolidated  Patent  Act  of  July  8,  1870. l  The  consent  of 
the  inventor  was  a  necessary  element  of  the  facts  upon  which 
the  old  law  raised  a  constructive  abandonment.2  That  consent 
need  not,  however,  to  have  been  given  in  writing,  or  even 
in  words.  Acquiescence  was  sufficient  to  prove  it.3  Section 
24  of  the  Act  of  1870  re-enacted  the  former  statutory  pro- 
visions on  the  subject,  with  one  modification  ;  and  that  section 
was  re-enacted,  without  any  change,  as  Section  4886  oiw  the 
Revised  Statutes.,  The  modification  introduced  in  the  Act  of 
1870,  and  continued  in  force  ever  since,  consisted  in  omitting 
the  consent  qualification,  which  had  theretofore  been  a  part  of 
the  law  of  the  subject."  A  public  use  or  a  sale  of  a  specimen 
of  a  newly  invented  thing,  occurring  after  its  invention  by  the 
applicant  and  without  his  consent,  but  more  than  two  years 
before  his  application  for  a  patent,  has  under  the  new  law  the 
same  effect  upon  that  applicant's  right  to  a  patent,  that  it 
would  have  if  it  had  occurred  with  his  consent. 


'  16  Statutes  at  Large,  Ch.  230,  p.  Campbell  v.  New  York,  9  Fed.  Rep. 

198.  504,  1881. 

*  Wyeth  v.   Stone,   1   Story,  281,  *  Sisson  v.  Gilbert,  9  Blatch.  188, 

1840  ;  American  Hide  and  Leather  1871. 

Splitting  Machine  Co.    v.  Machine  4  Manning   v.  Isinglass    Co.    108 

Co.  4  Fisher,  290,  1870  ;  Draper  v.  U.  S.  465, 1882. 
'Wattles,  3  Bann.  &  Ard.  618,  1878  ; 


CHAP.  V.]  ABANDONMENT.  67 

The  old  law  on  the  subject  of  consent,  can  still  be  invoked 
on  behalf  of  any  patent  granted  before  the  approval  of  the 
Act  of  July  8,  1870,  because  Section  111  of  that  Act  pro- 
vided that  no  change  thereby  enacted,  should  affect,  take  away, 
or  impair  any  right  existing  under  the  former  law.  Indeed, 
that  saving  clause  is  sufficient  to  entitle  the  old  law  to  be  in- 
voked on  behalf  of  any  patent  which  was  applied  for  before 
July  8,  18TO,  because  when  a  patent  is  applied  for,  the  ap- 
plicant has  an  existing  right  to  have  it  issued  according  to  ex- 
isting statutes.  He  ought  not  to  be  made  to  suffer  loss  of  that 
right,  by  reason  of  any  change  made  in  those  statutes  while 
the  Patent  Office  is  deliberating  upon  his  application.  In 
fact,  there  is  ample  warrant  for  the  opinion  that  the  old  law 
can  be  invoked  on  behalf  of  any  patent  granted  for  an  inven- 
tion which  was  made  before  July  8,  1870,  because  the  in- 
ventor of  a  new  and  useful  thing  is  vested  by  law  with  an  in- 
choate right  to  its  exclusive  use,  which  right  he  may  perfect 
and  make  absolute  by  proceeding  in  the  manner  which  the 
law  requires.1  Such  an  inchoate  right  is  an  existing  right 
within  the  meaning  of  the  saving  clause  of  the  Act  of  1870, 
and  that  right  would  be  taken  away  in  some  cases,  and  in  some 
cases  would  be  impaired,  if  the  new  law  on  the  subject  of  con- 
sent were  applied  to  inventions  made  before  its  approval.  It 
is  therefore  sufficiently  clear  that  the  repeal  of  the  consent 
clause  of  the  old  law  was  wholly  prospective,  and  that  none 
but  inventions  made  since  that  repeal,  can  be  constructively 
abandoned  by  being  in  public  use  or  by  being  on  sale,  without 
the  consent  of  the  inventor,  after  the  making  of  the  invention 
by  him. 

§  103.  Constructive  abandonment  of  an  invention,  after  an 
application  for  a  patent  thereon,  necessarily  results  from  con- 
structive abandonment  of  that  application,  in  certain  classes  of 
cases  which  are  explained  in  the  chapter  on  applications.8  In 
still  another  class  of  cases,  constructive  abandonment  of  an  in- 
vention, after  an  application  for  a  patent  thereon,  necessarily 
results  from  a  particular  kind  of  constructive  abandonment  of 

1  Gayler  v.  Wilder,  10  Howard,  493,  1850.     2  Section  147  of  this  book. 


68  ABANDONMENT.  [CHAP.   V. 

that  application,  unless  a  new  application  is  filed  within  a  cer- 
tain time  after  such  abandonment.  That  class  of  cases  is  the 
following.  Where  an  applicant  omits  to  pay  the  final  fee 
within  six  months  from  the  time  at  which  his  application  was 
allowed,  and  notice  thereof  sent  to  him  or  to  his  agent,  and 
where  he  also  omits  to  make  any  new  application  for  a  patent 
on  the  same  invention  within  two  years  after  such  allowance, 
he  can  never  obtain  a  patent  for  that  invention.1 

§  104.  The  statutory  law  relevant  to  constructive  abandon- 
ment, resulting  from  a  public  use  or  from  a  sale  of  a  newly  in- 
vented thing,  more  than  two  years  before  an  application  for  a 
patent,  is  a  law  which  operates  inflexibly  upon  all  cases  coming 
within  it.  Its  effect  cannot  be  obviated  by  any  evidence  show- 
ing reasons  for  the  delay,  however  ample  and  meritorious  those 
reasons  may  be.a  The  rule  of  this  section  doubtless  applies 
also  to  the  constructive  abandonment  explained  in  the  last. 

§  105.  Surrender  of  an  invention  may  be  effected  after  the 
grant  of  letters  patent  therefor,  by  means  of  a  formal  surren- 
der of  those  letters  patent.  A  proceeding  of  the  kind  was 
mentioned  by  the  Supreme  Court  as  being  confessedly  proper 
as  early  as  1832, 3  and  an  actual  surrender  of  the  sort  was  tac- 
itly approved  by  that  tribunal  about  twenty  years  later.4 

§  106.  No  abandonment  of  an  invention  after  the  issue  of 
letters  patent  thereon,  has  ever  been  judicially  decided  to  exist 
in  the  United  States.  The  Patent  Act  of  1832 5  provided 
that  a  certain  class  of  aliens  might  obtain  United  States  patents, 
who  had  theretofore  been  excluded  from  that  privilege  ;  but  it 
coupled  with  that  provision  an  enactment  that  every  patent 
granted  by  virtue  of  that  Act,  should  cease  and  determine  in 
case  of  failure  on  the  part  of  the  patentee  to  introduce  the  in- 
vention into  public  use  in  the  United  States  within  one  year 
from  the  issuing  of  the  patent,  or  in  case  of  a  discontinuance 
of  such  public  use  for  any  period  of  six  months,  or  in  case  of 

1  Revised  Statutes,  Section  4897.  4  Battin  v.    Taggert,   17   Howard, 

*  Sisson  v.  Gilbert,  9  Blatch.  189,  74,  1854. 

1871.  5  4  Statutes  at  Large,  Ch.  203,  p. 

:|  Grant    r.    Eaymond,    G    Peters,  577. 
240,  1832. 


CHAP.  Y.]  ABANDONMENT.  69 

failure  on  the  part  of  the  patentee  to  become  a  citizen  of  the 
United  States.  In  providing  such  a  rule  of  constmctive  aban- 
donment for  a  certain  class  of  aliens,  Congress  showed  that  it 
did  not  overlook  the  subject  of  non-user  of  patented  inven- 
tions ;  and  in  omitting  to  provide  any  such  rule  for  citizens  of 
the  United  States,  Congress  showed  that  it  did  not  intend  con- 
structive abandonment  to  result  from  non-user  in  their  cases. 
Even  as  to  aliens,  the  policy  of  the  law  upon  the  point  was 
soon  given  up.  The  Act  of  1836  repealed  all  former  patent 
statutes,  and  did  not  re-enact  the  provision  just  cited  from  the 
Act  of  1832,  nor  put  any  corresponding  restrictions  upon  any 
class  of  patentees.  Nor  has  any  later  statute  contained  any 
provision  of  the  kind.  The  fair  inference  from  this  course  of 
legislation  seems  to  be,  that  Congress  does  not  intend  any  pat- 
ent right  to  be  lost  on  any  ground  of  non-user  of  that  right. 
Even  before  Congress  had  thus  indicated  its  intention  on  the 
subject,  Justice  WASHINGTON  instructed  a  jury  that  no  disuser 
of  an  invention  after  it  is  patented,  can  amount  to  an  aban- 
donment, so  as  to  deprive  the  patentee  or  his  assignees  of  their 
exclusive  right  to  it  for  the  term  of  the  patent.1  So  also  the 
Supreme  Court  has  held  that  no  presumption  arises  against  a 
patent  from  any  use  of  the  invention  by  the  public  after  the 
patent  is  granted.2  Since  no  abandonment  of  an  invention 
after  it  is  patented,  can  arise  out  of  any  existing  statute,  or  be 
based  on  any  non-user  by  the  patentee,  or  on  any  user  by  the 
public,  we  seem  shut  up  to  the  conclusion  that  no  such 
abandonment  is  known  to  our  laws. 

§  107.  Acquiescence  by  a  patentee  in  unlicensed  use  of  his 
invention,  during  the  life  of  the  patent,  has  sometimes  been 
said  or  been  intimated  by  courts,  to  amount  to  an  abandon- 
ment of  the  patent  and  of  the  invention.  Four  cases  contain- 
ing such  statements  or  suggestions  are  to  be  found  in  the  re- 
ports. In  two  of  them  the  judges  made  their  observations  on 
the  subject,  in  spite  of  their  decisions  that  no  such  question 
was  involved  in  the  pleadings.  In  the  other  two  cases  the 

1  Gray  v.  James,  1  Peters  C.  C.  •  Shaw  v.  Cooper,  7  Peters,  320, 
403,  1817.  1833. 


70  ABANDONMENT.  [CHAP.  V. 

views  of  the  judges  were  inserted  in  charges  to  juries,  but  in- 
asmuch as  the  juries  found  for  the  respective  plaintiffs,  it  seems 
that  there  were  no  facts  in  the  cases  which  called  for  such 
statements  in  the  charges.  The  opinions  of  the  four  judges 
on  the  point  seem,  therefore,  to  be  no  more  weighty  than  the 
reasons  which  support  them.  But  no  reasons  applicable  to  the 
subject  of  abandonment  of  a  patent  are  contained  in  either  of 
the  cases,  though  one  of  them  contains  statements  of  reasons 
adapted  to  support  the  doctrine  of  estoppel.  Nor  do  the  four 
cases  agree  among  themselves,  relevant  to  the  character  or  to 
the  quantity  of  acquiescence  needed  to  support  an  hypothesis 
of  abandonment  of  a  patent.  In  Wyeth  v.  Stone,1  Justice 
STORY  intimated  that  such  acquiescence  must  be  without  ob- 
jection, and  must  continue  for  a  series  of  years.  In  Ransom 
v.  New  York,*  Judge  HALL  placed  no  such  limitation  as  the 
last  of  these  upon  the  doctrine,  and  if  he  hinted  at  the  first  of 
them  he  hinted  but  vaguely.  In  Bell  v.  Daniels,3  Judge 
LEAVITT  said  that  it  would  require  a  strong  case  to  prove  aban- 
donment of  a  patent  actually  granted.  In  Williams  v.  Rail- 
road Co.,4  Judge  WALLACE  said  :  "  Neither  does  mere  delay 
or  acquiescence  establish  an  abandonment  or  dedication  of  the 
patent.  There  must  be  an  acquiescence  in  the  appropria- 
tion of  the  right,  of  such  a  character  as  reasonably  to  induce 
the  belief  that  the  owner  intended  to  relinquish  it  to  the 
public  use. "  The  opinions  cited  in  this  section,  so  far  as  they 
disagree  with  the  statutes  and  decisions  cited  in  the  last,  do 
not  agree  in  that  disagreement,  and  they  seem  insufficient  to 
outweigh,  or  even  to  modify  the  doctrine  set  forth  in  that 
section. 

§  108.  Questions  relevant  to  actual  or  to  constructive  aban- 
donment of  patents  are  questions  of  fact ;  6  and  every  reason- 

1  Wyeth  v.   Stone,    1  Story,  282,  4  Williams  v.   Boston    &    Albany 

1840.  Railroad  Co.  4  Bann.  &.  Ard.  441, 

*  Eansom  v.  New  York,  1  Fisher,  1879. 

273,  1856.  *  Battin  v.  Taggert,  17  Howard,  84, 

3  Bell   v.    Daniels,    1    Bond,    219,  1854  ;  Kendall  v.  Winsor,  21  How- 

1868.  ard,  330,  1858. 


CHAP.   V.]  ABANDONMENT.  Yl 

able  doubt  relevant  to  any  such  question  should  be  solved  in 
favor  of  the  patent,  for  the  law  does  not  favor  forfeiture.1 

1  Pitts  v.  Hall,  2  Blatch.  238, 1851  ;  Bann.  &  Ard.  165,  1874  ;  Comstock 
McCormick  v.  Seymour,  2  Blatch.  v.  Sandusky  Seat  Co.  3  Bann.  &  Aid. 
256,  1851  ;  Birdsall  v.  McDonald,  1  188,  1878. 


CHAPTEE  VI. 

APPLICATIONS. 


109.  Constituents    of    applications 
for  patents. 

110.  The  petition. 

111.  Constituents  of  specifications. 

112.  The  preamble. 

113.  The  general  statement  of  the 
invention. 

114.  The  description  of  the  draw- 
ings. 

115.  The  detailed  description  of  the 
invention. 

116.  The  claim  or  claims. 

117.  Claims  in  machine  patents. 

118.  Claims  in  patents  for  manufact- 
ures. 

119.  Claims  in  patents  for  composi- 
tions of  matter. 

120.  Claims  in  process  patents. 

121.  The  signatures. 

122.  The  form  of  the  oath. 

123.  The  constituents  of  the  oath. 

124.  Affirmations. 

125.  The  Patent-Office  fees. 

126.  Drawings. 

127.  Models. 

128.  Specimens  of  compositions  of 
matter. 

129.  Dates  of  applications. 

130.  The  examination  by  the  Patent 
Office. 


131.  Notification  of  rejection. 

132.  Appeals. 

133.  Appeals  to  the  Supreme  Court 
of  the  District  of  Columbia. 

134.  Bills  in  equity  to  compel  the 
Commissioner  to  grant  a  patent. 

135.  Amendment  of  applications. 

136.  The  foundation  of  the  right  of 
amendment. 

137.  When  an  applicant  may  amend. 

138.  How  an  applicant  may  amend. 

139.  When  an  applicant  must  amend- 

140.  Interferences. 

141.  Number  of  interferences. 

142.  Decision  on  interference  is  not 
conclusive. 

143.  Caveats. 

144.  No  appeal   from   the  Commis- 
sioner   in    interference    cases ; 
but  relief  by  bill  in  equity. 

145.  Abandonment  of  applications. 

146.  Constructive   abandonment   of 
applications. 

147.  Constructive    abandonment   of 
application   working    construc- 
tive   abandonment     of    inven- 
tion. 

148.  Effect  of  Commissioner's  de- 
cision on  questions  relevant  to 
applications. 


§  109.  AN  application  for  a  patent  consists  of  the  following 
transactions.  The  deposit  in  the  Patent  Office  of  a  written 
petition  to  the  Commissioner  of  Patents  ;  the  like  deposit  of  a 
written  specification  of  the  invention  ;  the  making  of  an  oath  ; 


CHAP.    VI.]  APPLICATIONS.  73 

the  payment  of  the  Patent  Office  fee  ;  and  in  some  cases  the 
deposit  of  a  drawing  ;  and  in  some  cases  the  deposit  of  a 
model ;  and  in  some  other  cases  the  deposit  of  specimens.1 
Applications,  and  proceedings  on  applications,  are  primarily 
governed  by  the  provisions  of  the  Revised  Statutes.  Where 
those  provisions  do  not  cover  a  particular  point,  that  point  is 
governed  by  the  rules  of  the  Patent  Office.*  Every  such  rule, 
unless  it  is  inconsistent  with  law,  is  as  authoritative  as  the  Re- 
vised Statutes  themselves.3 

§  110.  The  petition  is  a  communication  signed  by  the  appli- 
cant and  addressed  to  the  Commissioner  of  Patents,  stating  the 
name  and  residence  of  the  petitioner,  and  requesting  the  grant 
of  a  patent  for  the  invention  therein  designated  by  name  and 
by  a  reference  to  the  specification  for  a  full  disclosure  thereof.4 
The  petition  must  be  the  petition  of  the  inventor,  and  not  of 
an  assignee  of  the  inventor,  though  it  may  properly  request 
that  the  patent,  when  granted,  shall  be  granted  to  an  as- 
signee.5 If,  however,  the  inventor  dies  before  the  patent  is 
granted,  the  petition  may  be  made  and  signed  by  his  executor 
or  administrator.' 

§  111.  The  specification  properly  consists  of  seven  parts. 
1.  The  preamble,  giving  the  name  and  residence  of  the  appli- 
cant, the  title  of  the  invention,  and  the  name  of  any  foreign 
country  from  which  he  or  his  assigns  may  have  received  a 
foreign  patent  for  the  same  invention,  and  other  particulars 
connected  therewith.  2.  A  general  statement  of  the  nature 
and  object  of  the  invention.  3.  A  brief  description  of  the 
drawings,  if  drawings  are  made,  showing  what  each  view 
represents.  4.  A  detailed  description  of  the  invention,  ex- 
plaining fully  its  construction  and  mode  of  operation,  if  it  is 
a  thing,  or  the  manner  of  performing  it,  if  it  is  a  process.  5. 


1  Revised  Statutes,  Sections  4888,  22  Off.  Gaz.  1365,  1882. 
4889,  4890,  4891,  4892,  4893  ;  Eules  4  Patent  Office  Rule  33. 

of  Practice   of  the    United    States  5  Revised  Statutes,  Section  4895  ; 

Patent  Office,  revised   February   1,  Patent  Act,  of  March  3,  1837,  Sec- 

1883,  Rule  30.  tion  6. 

2  Revised  Statutes,  Section  483.  •  Revised  Statutes,  Section  4896  ; 
8  United  States  v.  Commissioner,  Patent  Act  of  April  17,  1800,  Sec.  2. 


74  APPLICATIONS.  [CHAP.  VI. 

The  claim  or  claims.  6.  The  signature  of  the  inventor.  7. 
The  signatures  of  two  witnesses.1 

§  112.  The  preamble  states  the  name  and  residence  of  the 
inventor,  arid  the  title  of  the  invention,  in  order  to  connect 
the  specification  with  the  petition  ;  and  it  states  the  particulars 
of  foreign  patents  previously  granted  for  the  same  invention, 
in  order  to  inform  the  Commissioner  whether  he  is  to  grant  a 
patent  for  seventeen  years,  or  whether,  in  pursuance  of  Section 
4887  of  the  Revised  Statutes,  he  is  to  so  limit  the  patent,  that 
it  will  purport  to  expire  at  the  same  time  with  some  foreign 
patent  for  the  same  invention.  There  is  no  statute  which 
makes  it  the  duty  of  the  applicant  to  furnish  the  Commissioner 
with  information  on  that  subject.  If  he  omits  to  do  so,  and 
if  the  Commissioner  ascertains  the  facts  elsewhere,  and  limits 
the  term  of  the  patent  accordingly,  then  every  purpose  is  an- 
swered that  would  have  been  answered  if  the  applicant  had 
stated  the  facts  in  his  application.  The  rules  of  the  Patent 
Office,  however,  do  require  the  applicant  to  mention  such  a 
foreign  patent,  if  any  exists  ; "  and  in  the  absence  of  such  men- 
tion the  Commissioner,  if  he  grants  a  patent,  grants  it  for  the 
term  of  seventeen  years.  If  subsequent  litigation  discloses  the 
prior  granting  of  a  foreign  patent  for  a  term  sooner  ending,  it 
will  be  impossible  for  the  United  States  patent  to  continue  in 
force  for  the  full  term  expressed  on  its  face.  Some  courts 
have  held  that,  under  such  circumstances,  the  patent  must 
be  reformed  by  construction,  and  thus  be  given  the  same 
duration  that  it  ought  to  have  purported  to  have.  Other 
courts  have  held  that,  under  the  same  circumstances,  the  pat- 
ent is  altogether  void.  The  subject  is  fully  explained  in  the 
seventh  chapter  of  this  book,  and  is  mentioned  in  this  place  in 
order  to  show  the  practical  importance  of  conforming  to  the 
rule  of  the  Patent  Office  in  regard  to  the  matter. 

§  113.  The  general  statement  of  the  nature  and  function  of 
the  invention,  is  a  convenient  mode  of  introducing  the  detailed 
description.  If  it  is  omitted  in  form,  it  will  necessarily  be  in- 
serted in  substance  in  the  detailed  description  itself. 

1  Patent  Office  Rule  35.  *  Patent  Office  Rule  39. 


CHAP.  VI.]  APPLICATIONS.  75 

§  114.  The  description  of  the  drawings  is  a  convenience  in 
aid  of  their  understanding,  but  if  that  description  is  omitted, 
and  all  reference  to  the  drawings  is  excluded  from  the  specifi- 
cation, no  statutory  requirement  is  necessarily  departed  from.1 
In  such  a  case,  however,  the  specification  would  perhaps  be 
impossible  to  be  understood,  and  therefore  be  obnoxious  to 
the  rules  stated  in  the  next  section. 

§  115.  The  detailed  description  must  be  full  enough,  and 
clear  enough,  and  concise  enough,  and  exact  enough,  to  enable 
any  person  skilled  in  the  art  or  science  to  which  it  appertains, 
or  with  which  it  is  most  nearly  connected,  to  make  and  use 
the  invention,  if  it  is  a  machine  or  a  manufacture,  or  to  com- 
pound the  invention,  if  it  is  a  composition  of  matter,  or  to 
perform  the  invention,  if  it  is  a  process.2  If  the  description 
falls  below  this  standard,  the  patent,  if  granted,  will  be 
void.3 

The  statute  also  says  that  in  case  of  a  machine,  the  applicant 
shall  explain  the  principle  thereof,  and  the  best  mode  in  which 
he  has  contemplated  applying  that  principle,  so  as  to  distin- 
guish it  from  other  inventions.4  These  provisions  must  be 
read  in  the  light  of  their  avowed  object.  That  object  is  iden- 
tification. The  first  provision  cannot  mean  that  the  inventor 
must  infallibly  explain  the  law  of  nature  which  makes  his 
machine  work  ;  for  if  it  means  that,  neither  Morse  nor  Bell  com- 
plied with  it  when  describing  the  telegraph  or  the  telephone, 
and,  indeed,  neither  Morse  nor  Bell  nor  any  man  could  have 
done  so.  The  second  provision  cannot  mean  that  every  in- 
ventor must  infallibly  judge  which  of  several  forms  of  his 
machine  will  eventually  be  found  to  work  best,  for  if  it  means 
that,  it  requires  wrhat  is  of  ten  impossible  :  requires  the  inventor 
to  foresee  the  ultimate  effects  of  new  and  comparatively  un- 
tried causes.  The  first  provision  means  that  the  essential  dis- 
tinctive characteristic  of  the  machine  shall  be  explained  ;  and 
the  second  provision  means  that  the  inventor  shall  state  the 


1  Emerson  v.  Hogg,  2  Blatch.  9,  3  O'Reilly  v.  Morse,  15  Howard, 

1845.  62,  1853. 

8  Revised  Statutes,  Section  4888.  4  Revised  Statutes,  Section  4888. 


76  APPLICATIONS.  [CHAP.  vi. 

mode  which  he  contemplates  to  be  the  best.1  Inasmuch  as 
the  validity  of  a  patent  depends  on  the  sufficiency  of  the  de- 
scription, the  subject  of  this  section  is  treated  with  more  de- 
tail in  the  chapter  on  letters  patent,  the  seventh  of  this  book. 
Enough  has  been  outlined  in  this  connection  to  show  what 
kinds  of  statements  those  descriptions  need  to  contain. 

§  116.  The  claim  or  claims  constitute  a  necessary  part  of 
every  specification.  The  statutory  requirement  in  this  regard 
is,  that  the  applicant  "  shall  particularly  point  out  and  dis- 
tinctly claim  the  part,  improvement,  or  combination  which 
he  claims  as  his  invention."8  The  practice  of  the  Patent 
Office  has  always  been  to  require  the  claim  or  claims  to  be 
made  in  that  part  of  the  specification  which  immediately  pre- 
cedes the  signatures.  It  is  a  practice  of  many  solicitors  of 
patents  to  write  claims  in  vague  phraseology,  with  an  idea 
that  vagueness  is  elasticity,  and  that  elasticity  is  excellence. 
Such  a  practice  is  neither  honest  nor  expedient.  It  is  not 
honest,  because  it  is  often  intended,  and  always  adapted,  to 
deceive  the  public,  and  to  lead  individuals  into  unintended 
infringement.  It  is  not  expedient,  because  dishonesty  is  bad 
policy  in  matters  of  patents,  as  in  all  other  human  affairs,  and 
because  vagueness  of  claims  may  make  a  patent  void  which 
would  otherwise  be  valid.  It  is  the  practice  of  many  other 
solicitors  of  patents  to  write  claims  in  loose  phraseology, 
because  they  do  not  know  how  to  write  precise  sentences.  By 
multiplying  words  they  hope  to  hit  the  mark,  on  the  same 
principle  that  the  user  of  a  shotgun  hopes  to  hit  a  solitary 
bird.  But  the  principles  which  apply  to  shotguns  do  not 
apply  to  rhetoric.  The  true  rhetorician  uses  a  rifle,  not  a 
blunderbuss.  With  him  every  word  hits  its  target,  because  it 
is  adapted  to  do  so,  and  because  he  knows  how  to  aim  it. 

Writing  a  claim  for  a  patent  may  require  as  many  points  of 
information  and  powers  of  mind,  as  can  ever  be  required  for 
any  prose  writing  of  similar  length.  More  than  half  the  chap- 
ters of  this  book  contain  such  points  of  information,  but 

1  Carver  v.  Mfg.  Co.  2  Story,  44,       1857. 
1843  ;  Page  v.  Ferry,  1  Fisher,  309,          *  Revised  Statutes,  Section  4888. 


CHAP.   VI.]  APPLICATIONS.  77 

neither  this  nor  any  other  law  book,  can  embody  all  that  the 
penner  of  such  a  claim  requires  to  know.  A  few  leading 
points  may,  however,  be  conveniently  stated  in  this  place. 

§  117.  In  cases  where  the  description  sets  forth  an  entire 
machine,  the  applicant  may  lawfully  make  a  claim  coextensive 
with  the  description,  if  the  machine  as  a  whole  possesses 
novelty.  But  such  a  claim  ought  seldom  to  be  the  only  one 
in  a  patent,  because,  for  reasons  stated  in  the  chapter  on  in- 
fringement, it  can.  in  most  cases,  be  readily  evaded.  The 
proper  practice  is  to  fix  upon  the  new  parts,  or  new  sub- 
combinations,  which  the  described  machine  contains,  and  to 
make  a  separate  claim  for  each  of  those  parts,  and  for  eacli 
of  those  combinations.1  Indeed,  the  applicant  may,  if  he 
will,  apply  for  and  receive  a  separate  patent  for  each  of  those 
parts  and  combinations.2  In  either  way  the  rights  of  the  in- 
ventor may  be  secured,  because  it  is  a  rule  of  infringement 
that  a  patent  is  infringed  whenever  any  one  of  its  claims  is 
violated.  To  secure  a  particular  part  of  a  machine,  a  claim 
must  specify  that  part,  and  to  secure  a  particular  combination 
of  some  of  the  parts  of  a  machine,  a  claim  must  specify 
all  those  parts,  and  the  description  must  explain  their  joint 
mode  of  operation,  and  must  state  their  joint  function.* 

§  118.  In  cases  where  the  description  sets  forth  a  manufact- 
ure, there  ought  to  be  a  claim  for  each  of  its  patentable  feat- 
ures ;  for  if  there  is  but  one  claim,  and  if  all  those  features 
are  covered  by  it,  then  those  persons  who  manage  to  dispense 
with  even  the  least  of  them,  incur  no  liability  by  making, 
using,  or  selling  articles  which  possess  all  the  others.4 

§  119.  In  cases  where  the  description  relates  to  a  composi- 
tion of  matter,  the  claim  should  cover  that  composition  in  its 
entirety,  and  should,  either  expressly,  or  by  reference  to  the 
description,  specify  the  respective  proportions  which  the 


1  Gill    v.   Wells,  22  Wallace,    24,  3  Parks  v.  Booth,   102  U.  S.  102, 

1874;   Adams  v.  Jones,    1    Fisher,  1880. 

530,  1859.  4  Prouty   v.   Haggles,    16   Peter* 

s  Corn-Planter  Patent,  23  Wallace,  336,  1842. 
224,  1874. 


78  APPLICATIONS.  [CHAP.  vi. 

different  ingredients  bear  to  each  other.1  But  where  some 
of  the  described  ingredients  may  be  dispensed  with,  the  ap- 
plicant, if  he  states  that  fact  in  the  description,  may  have  a 
separate  claim  for  a  composition  of  matter  composed  only  of 
the  residue,  or  he  may  have  a  single  claim  covering  the  indis- 
pensable ingredients,  whether  with  or  without  the  others.9 

§  ]  20.  In  cases  where  the  description  relates  to  a  process, 
the  claim  should  cover  all  the  necessary  elements  in  that  proc- 
ess, and  cover  no  more.  If  it  covers  less  than  all  the  neces- 
sary elements,  it  will  not  secure  the  invention  described,  and 
will  not  secure  anything  of  value  as  a  patent.  If  it  covers 
more  than  the  necessary  elements,  it  can  be  evaded  by  persons 
who  omit  those  which  are  unnecessary,  when  using  the  others. 

§  121.  The  signatures  of  the  applicant  and  of  the  witnesses, 
must  embody  the  full  names  of  those  persons,  and  must  be 
legibly  written.*  The  grammatical  construction  of  the  statu- 
tory provision,  relevant  to  signatures,  seems  to  indicate  that 
the  document  signed  by  the  applicant,  and  not  the  signature 
of  that  applicant,  is  the  thing  which  is  to  be  attested  by  the 
two  witnesses.  In  cases  where  language  of  similar  character 
has  been  used  in  statutes,  which  prescribe  the  mode  of  attest- 
ing wills,  it  has  been  decided  to  be  immaterial,  whether  the 
witnesses  sign  before  or  sign  after  the  execution  of  the  docu- 
ment ;  *  but  where  such  statutes  have  provided  for  attesting 
the  signatures  rather  than  the  will,  it  is  the  law  that  the  docu- 
ment is  void  if  the  witnesses  sign  before  the  testator.6  It  is 
the  practice  of  the  Patent  Office  to  regard  the  attestation  as 
being  attestation  of  the  signatures,  and,  accordingly,  to  re- 
quire two  witnesses  for  each  signature,  in  cases  of  joint  appli- 
cations for  joint  inventions.  The  same  two  witnesses  may 
indeed  attest  all  the  signatures  ;  but  where  one  witness  attest- 
ed the  signature  of  one  joint  inventor,  and  another  witness  at- 


1  Tyler  v.  Boston,  7  "Wallace,  327,  4  O'Brien  v.  Galagher,  25  Con- 

1868.  necticut,  229,  1856. 

•  Rubber  Co.  «.  Goodyear,  9  Wai-  *  Wharton  on  Evidence,  Section 

lace,  788,  1869.  888. 

3  Patent  Office  Rule  43. 


CHAP.  VI.]  APPLICATIONS.  79 

tested  the  signature  of  the  other,  of  two  joint  inventors,  the 
Patent  Office  has  held  the  attestation  to  be  insufficient. 

§  122.  The  oath  is  not  required  by  the  statute  to  be  in 
writing,  nor  to  be  recorded.  It  may  be  taken  anywhere  in 
the  United  States,  before  any  person  authorized  by  law  to  ad- 
minister oaths  at  that  place  ;  or,  when  the  applicant  resides 
in  a  foreign  country,  it  may  be  taken  before  any  minister, 
charge  d'affaires,  consul,  or  commercial  agent,  holding  com- 
mission under  the  government  of  the  United  States,  or  before 
any  notary  public  of  the  foreign  country  in  which  the  appli- 
cant may  be.1 

Recital  in  the  letters  patent,  that  the  required  oath  was 
made  by  the  applicant,  is,  in  the  absence  of  fraud,  conclusive 
evidence  of  that  fact.2  The  presence,  in  the  files  of  the 
Patent  Office,  of  a  paper  purporting  to  be  the  oath  in  a  given 
case,  but  void  for  lack  of  a  jurat,  or  for  some  other  fault,  is  a 
harmless  circumstance.3  In  such  a  case  the  law  presumes  that 
the  oath  recited  in  the  letters  patent  was  made  orally,  or  was 
embodied  in  some  other  paper.  It  is  presumed  that  the  Com- 
missioner will  never  issue  a  patent,  till  he  is  satisfied  that  the 
applicant  has  somehow  made  oath  to  the  facts  to  which  the 
statute  requires  him  to  swear.  "When  the  Commissioner  is  so 
satisfied,  and  recites  the  fact  in  the  letters  patent,  all  inquiry 
on  the  subject  is  foreclosed,  except  in  cases  of  actual  fraud. 
Rule  46  of  the  Patent  Office  provides,  however,  that  the  oath 
or  affirmation  is  to  be  attested  in  all  cases  by  the  proper 
official  seal  of  the  officer  before  whom  it  is  taken.  That  im- 
plies that  the  Commissioner  requires  the  oath  to  be  put  into 
writing.  If,  however,  he  were  to  waive  that  requirement  in 
a  given  case,  and  were  to  content  himself  with  an  oral  oath, 
and  were  to  recite  in  the  patent  that  the  required  oath  was 
made,  the  law  would  still  have  been  complied  with. 

§  123.  The  statute  requires  an  applicant  to  make  oath  that 


1  Revised  Statutes,  Section  4892.  3  Fisher,  536,  1869  ;  De  Florez  v. 

9  Seymour  v.  Osborne,  11  Wallace,  Raynolds,  14  Blatch.  506, 1878  ;  Hoe 

516,  1870.  v.  Kahler,  12  Fed.  Rep.  117,  1882. 
3  Crompton  v.  The  Belknap  Mills, 


80  APPLICATIONS.  [CHAP.  VI. 

he  does  verily  believe  himself  to  be  the  first  inventor  of  the 
invention  for  which  he  solicits  a  patent,  and  to  state  of  what 
country  he  is  a  citizen. '  The  Patent  Office  rules  require, 
that  this  last  mentioned  statement  shall  also  be  made  in  the 
oath,  and  that  the  applicant  shall  also  state  in  the  oath,  where 
lie  resides,  and  whether  the  invention  has  been  patented  to 
himself,  or  to  any  other  with  his  consent  or  knowledge,  in  any 
country,  and  if  it  has,  that,  according  to  his  knowledge  and 
belief,  the  same  has  not  been  in  public  use  in  the  United 
States  for  more  than  two  years  prior  to  the  application  in 
this  country  ;  and  those  rules  also  require  that  the  applicant 
shall  name,  under  oath,  such  foreign  country  or  countries,  and 
shall  likewise  set  forth  the  number  and  date  of  every  such 
patent  granted  therein." 

The  statute  of  183G,  which  was  in  force  till  the  approval  of 
the  Act  of  1870,  required  the  applicant  to  make  oath  or  affirm- 
ation of  what  country  he  was  a  citizen  ; 3  whereas  the  Act 
of  1870,  and  the  Revised  Statutes,  require  only  his  statement 
on  that  subject.  The  old  law  governs  all  applications  made 
before  July  8,  1870  ;  and  under  it  Justice  GRIER  decided 
that  where  an  applicant  mentioned  a  wrong  country  in  his  oath, 
that  error  rendered  his  patent  void,  even  though  it  arose 
from  an  erroneous  opinion  relevant  to  what  constituted  citizen- 
ship of  the  United  States.4 

When  an  application  for  a  patent  is  made  by  an  executor  or 
administrator  of  a  deceased  inventor,  the  statute  directs  the 
oath  to  be  so  varied  in  form  that  it  can  be  made  by  him.5 
Whether,  in  such  a  case,  it  is  necessary  for  the  applicant  to 
swear  that  he  believes  that  the  deceased  believed  himself  to 
be  the  first  inventor,  or  whether  it  is  necessary  for  the  ap- 
plicant to  swear  that  he  believes  that  the  deceased  was  in  fact 
the  first  inventor  of  the  invention,  is  an  unsettled  question. 
If  the  first  is  the  true  view,  then  an  executor  may  obtain, 
without  perjury,  a  patent  for  an  invention  which  he  may 

1  Revised  Statutes,  Section  4892.  «  Child   v.  Adams,  1  Fisher,  193, 

5  Patent  Office  Rales  45  and  39.  1854. 

8  5  Statutes  at  Large,  Ch.  357,  Sec-  6  Revised  Statutes,  Section  4896. 
tion  6,  p.  119. 


CHAP.  VI.]  APPLICATIONS.  81 

know  to  have  been  previously  used  in  the  United  States.  If 
the  second  is  the  true  view,  then  an  executor  may  be  unable 
to  obtain,  without  perjury,  a  patent  for  an  invention  never 
before  known  or  used  in  this  country,  and  not  previously 
patented  or  described  in  any  printed  publication,  in  this  or  in 
any  foreign  country,  and  not  known  or  believed  by  its  invent- 
or, to  have  been  previously  known  or  used  anywhere  in  the 
world.  In  the  first  of  these  contingencies,  a  wrong  may 
result  to  the  public,  and  in  the  last,  a  wrong  may  result  to 
the  beneficiaries  of  the  deceased. 

§  124.  An  affirmation  in  judicial  form  may  always  be  sub- 
stituted for  any  oath  required  by  any  United  States  statute.1 
Nor  is  this  rule  confined,  as  it  is  in  the  statutes  of  some  of  the 
States,  to  cases  where  the  affiant  wishes  to  obey  the  command- 
ment of  Jesus  Christ,2  or  for  some  other  reason  informs  the 
magistrate  that  he  has  scruples  of  conscience  against  taking  an 
oath. 

§  125.  The  Patent  Office  fee,  due  with  the  application  for 
a  patent  for  a  process,  machine,  manufacture,  or  composition 
of  matter,  is  fifteen  dollars,  and  a  final  fee  of  twenty  dollars 
is  payable  after  such  a  patent  has  been  allowed  and  before  it 
is  issued.  The  fees  for  patents  for  designs,  vary  with  the 
length  of  the  terms  of  the  patents  applied  for.  For  such  a 
patent  for  three  years  and  six  months,  the  fee  is  ten  dollars  :. 
for  such  a  patent  for  seven  years,  the  fee  is  fifteen  dollars  :: 
for  such  a  patent  for  fourteen  years,  the  fee  is  thirty  dollars.5 
Fees  for  design  patents  are  required  to  be  paid  in  advance.4 
The  final  fee,  above  mentioned,  must  be  paid  within  six 
months  after  the  patent  is  allowed,  and  notice  thereof  is  sent 
to  the  applicant  or  his  agent  ;  and  if  that  fee  is  not  paid 
within  that  time,  the  statute  provides  that  the  patent  shall  be 
withheld.6  The  Commissioner  of  Patents  has  no  jurisdiction 
to  do  what  the  statute  forbids.  If,  therefore,  he  were  to 
issue  a  patent  on  an  application,  the  final  fee  for  which  was 


1  Revised  Statutes,  Section  1.  «  Patent  Office  Rule  208. 

9  Matthew,  5  :  34-37.  5  Revised  Statutes,  Section  4885. 

3  Revised  Statutes,  Section  4934. 


82  APPLICATIONS.  [CHAP.  vi. 

not  paid  till  more  than  six  months  after  the  patent  was  al- 
lowed, he  would  be  acting  without  authority,  and  the  patent 
would,  for  that  reason,  be  void.  It  is  important,  therefore, 
to  know  how  long  a  time  the  six  months  is,  which  is  allowed 
for  the  payment  of  that  fee.  At  common  law,  a  month  is  a 
lunar,  not  a  calendar  month.1  Many  of  the  States  have  re- 
versed this  definition  by  statute,  but  Congress  never  has.  It  is 
therefore  the  legal  definition  of  the  word  "month"  in  the 
section  now  under  view.  Six  calendar  months  can  never 
consist  of  fewer  than  one  hundred  and  eighty-one  days,  while 
six  lunar  months  cover  a  space  of  time  about  two  weeks 
shorter  than  that.  This  difference  should  be  regarded  by  ap- 
plicants for  patents.  If  a  patent  were  granted  on  an  applica- 
tion, the  final  fee  for  which  was  paid  more  than  six  lunar 
months  after  the  patent  was  allowed,  that  patent  would  be 
void  for  want  of  jurisdiction  in  the  Commissioner  to  issue  it. 

§  126.  Drawings  are  required  by  the  statute  to  be  furnished 
by  applicants  for  patents,  in  all  cases  wherein  the  invention 
admits  of  representation  by  drawings.*  The  statutory  re- 
quirement relevant  to  the  character  of  such  drawings,  is 
merely  that  they  shall  be  signed  by  the  applicant  or  by  his  at- 
torney in  fact,  and  shall  be  attested  by  two  witnesses.  The 
Patent  Office  rules  require,  in  addition,  that  drawings  must 
show  every  feature  of  the  invention  covered  by  the  claims ; 
and  when  the  invention  consists  of  an  improvement  on  an 
old  machine,  must  exhibit,  in  one  or  more  views,  the  in- 
vention itself,  disconnected  from  the  old  structure,  and  also, 
in  another  view,  so  much  only  of  the  old  structure  as  will 
suffice  to  show  the  connection  of  the  invention  therewith.* 
Those  rules  also  prescribe  numerous  other  characteristics  for 
drawings.*  They  are  all  necessary  to  the  systematic  and 
proper  conduct  of  the  business  of  the  office,  and  must  be 
carefully  followed  in  order  to  secure  favorable  action  from  the 
Commissioner. 

To  be  as  useful  as  possible,  all  drawings  for  letters-patent 


1  Blackstone,  Book  2,  Ch.  9.  8  Patent  Office  Kule  49. 

1  Revised  Statutes,  Section  4889.  4  Patent  Office  Rule  50. 


CITAP.   VI.]  APPLICATIONS.  83 

ought  to  show  the  true  positions  and  proportions  of  the  parts 
of  the  inventions  which  they  purport  to  delineate  ;  but  it  is 
not  necessary  that  they  be  accurate  enough  to  be  used  as 
working  drawings,  from  which  to  construct  specimens  of 
those  inventions.1 

Drawings  in  applications  filed  prior  to  July  8,  18VO,  and 
after  July  4,  1836,  were  required  to  have  "written  refer- 
ences."2 The  object  of  such  references  was  to  connect  the 
various  parts  of  the  drawings  with  the  corresponding  parts  of 
the  specification  ;  but  it  was  a  sufficient  compliance  with  that 
statute,  where  those  references  were  made  on  the  drawings, 
though  not  made  in  the  specification.3  The  present  statute 
says  nothing  about  any  references,  or  other  means  of  connect- 
ing drawings  with  specifications  ;  but  the  Patent  Office  rules 
require  that  they  shall  be  connected  by  figures  adjacent  to  the 
different  views,  and  by  letters  or  figures  adjacent  to  the  differ- 
ent parts  of  the  drawings,  and  by  incorporating  those  figures 
and  letters  in  the  descriptive  part  of  the  specification.4 

§  127.  A  model  of  the  invention  is  required  by  the  statute 
to  be  furnished  by  the  applicant,  in  all  cases  wherein  the  inven- 
tion admits  of  representation  by  model,  provided  the  Commis- 
sioner requires  a  model.8  This  proviso  was  not  in  the  statute 
of  1836,  but  it  was  inserted  in  that  of  1870,  in  order  to  enable 
the  Commissioner  to  dispense  with  models,  in  all  cases  where 
their  utility  is  inferior  in  value  to  their  cost,  and  to  the  room 
they  would  occupy  in  the  Patent  Office.  Under  the  operation 
of  the  proviso,  models  are  at  present  called  for  by  the  Com- 
missioner in  not  more  than  one  tenth  of  the  cases  that  admit 
of  representation  thereby. 

§  128.  Specimens  of  compositions  of  matter,  and  of  the  in- 
gredients thereof,  are  required  by  the  statute  to  be  furnished 
by  applicants  for  patents  for  such  compositions  of  matter,  in 
all  cases  where  the  Commissioner  calls  for  such  specimens.* 

1  American  Hide  and  Leather  Split-  3  Emerson  v.  Hogg,  2   Blatch.  1, 

ting  Machine  u.  Machine  Co.  4  Fish-  1845. 

er,  284,  1870.  *  Patent  Office  Rules  37  and  50. 

J  5  Statutes  at  Large,  Ch.  357,  Sec-  *  Revised  Statutes,  Section  4891. 

tion  6,  p.  119.  «  Revised  Statutes,  Section  4890. 


84:  APPLICATIONS.  [CHAP.  VI. 

lie  always  does  call  for  at  least  a  specimen  of  the  composi- 
tion, put  up  in  proper  form  to  be  preserved,  unless  that  com- 
position is  in  its  nature  perishable.1 

§  129.  An  application  for  a  patent  dates  from  its  filing  in 
the  Patent  Office,  and  not  from  the  day  of  its  execution  by  the 
applicant,  nor  from  the  day  of  the  deposit  of  a  model  in  the 
Patent  Office,  nor  from  the  day  of  the  deposit  of  anything 
there  less  than  the  full  application.11  In  the  absence  of  other 
evidence,  the  date  of  the  application  for  a  particular  patent, 
is  taken  to  be  identical  with  the  date  of  the  letters  patent 
itseH.8  Letters  patent,  and  printed  certified  Patent  Office 
copies  of  letters  patent,  not  old  enough  to  have  expired,  al- 
ways have  upon  them,  in  the  space  under  the  title,  a  memoran- 
dum that  the  application  therefor  was  filed  on  a  particular 
specified  day.  But  no  such  memorandum  is  evidence  of  the 
fact  it  recites.  It  is  not  evidence  at  common  law,  nor  in  pur- 
suance of  any  statute.  That  section  of  the  Revised  Statutes  * 
which  gives  evidential  character  to  certain  certified  copies, 
does  not  include  any  such  memorandum,  because  it  is  no  part 
of  the'  letters  patent  upon  which  it  is  placed,  and  because  it  is 
not  a  copy  of  any  record,  book,  paper,  or  drawing  belonging 
to  the  Patent  Office.  It  is  an  indication  of  what  some  such 
record,  book,  or  paper  appears  to  show,  but  it  is  not  evidence 
of  its  own  accuracy,  nor  is  it  covered  by  the  certificate  at- 
tached to  the  document  upon  which  it  is  placed. 

§  130.  Those  transactions  which  constitute  an  original  ap- 
plication for  a  patent,  have  thus  far  constituted  the  subjects 
explained  in  this  chapter.  "When  such  an  application  is  made 
by  any  person,  it  becomes  the  duty  of  the  Commissioner  to 
cause  an  examination  thereof,  and  of  the  invention  covered 
thereby.  If,  upon  such  examination,  it  appears  that  the  ap- 
plicant is  justly  entitled  to  a  patent  under  the  law,  it  is  the 
duty  of  the  Gommissioner  to  issue  one  to  him  for  that  inven- 


1  Patent  Office  Rule  61.  &  Ard.  108,  1880. 

*  Draper  v.   Wattles,  3    Bann.   &  3  Worley  v.  Tobacco  Co.  104  U.  S. 

Ard.  618,   1878  ;  Henry  v.  Frances-  342,  1881. 

town  Soap-stone  Stove  Co.   5  Bann.  4  Revised  Statutes,  Section  892. 


OHAP.  VI.]  APPLICATIONS.  85 

tion.1  The  statute  does  not  prescribe  that  the  Commissioner 
shall  cause  this  examination  to  be  made  by  any  particular  sub- 
ordinate, and  he  may  overrule  the  decision  of  any  subordinate 
to  whom  he  may  have  committed  the  matter.8 

The  examination  may  extend  not  only  to  the  novelty  of  the 
invention  covered  by  the  application,  but  also  to  any  other 
question  of  fact,  upon  which  the  validity  of  the  patent,  if 
granted,  may  be  expected  to  depend.  If  the  investigation  of 
any  such  question  necessitates  the  taking  of  testimony  by  the 
Commissioner,  he  cannot  take  that  testimony  in  the  form  of 
ex-parte  affidavits,  but  must  take  it  in  the  form  of  depositions, 
made  upon  notice  to  the  applicant  to  appear  and  cross-exam- 
ine the  deponents.3 

§  131.  Whenever,  after  an  examination,  any  application  for 
a  patent  is  rejected,  it  is  the  duty  of  the  Commissioner  to 
notify  the  applicant  thereof,  giving  him  the  reasons  for  such 
rejection,  together  with  such  information  and  references,  as  may 
be  useful  in  judging  of  the  propriety  of  prosecuting  the  ap- 
plication, or  of  altering  the  specification  ;  and  if,  after  receiv- 
ing such  a  notice,  the  applicant  persists  in  his  request  for  a 
patent,  with  or  without  altering  his  specification,  it  there- 
upon becomes  the  duty  of  the  Commissioner  to  cause  a  re- 
examination  of  the  case.4 

§  132.  If,  without  amending  his  specification,  the  applicant 
persists  in  his  request  for  a  patent,  and  if  the  application  is 
again  rejected  by  the  primary  examiner,  to  whom  the  Com- 
missioner referred  the  case,  then  the  applicant  may  appeal 
to  the  board  of  examiners-in-chief ; &  and  if  unsuccessful 
there,  he  may  appeal  to  the  Commissioner  in  person  ;  *  and  if 
the  Commissioner  refuses  to  grant  him  a  patent,  the  applicant 
may  appeal  to  the  Supreme  Court  of  the  District  of  Colum- 
bia sitting  in  bane  ; 7  and  if  the  Commissioner  refuses  to 

'  Revised  Statutes,  Sections  4893,  269,  1882. 
4886.  «  Revised  Statutes,  Section  4903  ; 

9  Hull  v.  Commissioner  of  Patents,  Patent  Office  Rule  64. 
7  Off.  Gaz.   559,   1875  ;  8  Off.  Gaz.  »  Revised  Statutes,  Section  4909. 

46,  1875.  «  Revised  Statutes,  Section  4910. 

8  Alteneck's  Appeal,  23  Off.   Gaz.           '  Revised  Statutes,  Section  4911. 


86  APPLICATIONS.  [CHAP.  vi. 

allow  that  appeal,  he  may  be  compelled  to  do  so,  bj  a  writ  of 
mandamus,  granted  by  the  latter  tribunal,  upon  the  petition 
of  the  applicant.'  These  appeals  must  all  be  heard  on  the 
case  as  submitted  to  the  primary  examiner.2  No  appeal, 
therefore,  should  be  taken  until  the  application  is  in  such  a 
condition  that  the  patent  will  issue,  if  the  decision  of  the  pri- 
mary examiner  is  reversed.9  If  that  decision  is  reversed  by 
the  board  of  examiners-in-chief,  the  primary  examiner  can 
require  no  amendment,4  but  must  pass  the  case  for  issue.  If 
the  board  affirms  the  decision  of  the  primary  examiner,  the 
Commissioner  will  not  reverse  the  board  on  any  question  of 
fact,  unless  its  decision  was  clearly  against  the  weight  of  evi- 
dence.6 If  the  Commissioner  affirms  the  decision  of  the 
board,  because  the  patent  ought  not,  in  his  judgment  to  issue, 
he  need  assign  but  one  reason  for  that  opinion.  The  applicant 
cannot  demand  of  him  that  he  pass  upon  any  other  question.' 

§  133.  "Where  an  appeal  is  taken  to  the  Supreme  Court  of 
the  District  of  Columbia,  the  applicant  is  required  to  give 
notice  thereof  to  the  Commissioner,  and  to  file  in  the  Patent 
Office,  within  such  time  as  the  Commissioner  shall  appoint, 
his  reasons  for  the  appeal,  specifically  set  forth  in  writing.7 

The  court,  before  hearing  the  appeal,  gives  notice  to  the 
Commissioner  of  the  time  and  place  thereof,  and  the  Commis- 
eioner  is  required,  thereupon,  to  give  like  notice  to  all  persons 
who  appear  to  be  interested  in  the  case.  The  applicant  is  re- 
quired to  lay  before  the  court  at  the  hearing,  certified  copies 
of  all  the  papers  in  the  case,  and  the  Commissioner  is  required 
to  furnish  the  court  with  a  full  written  statement  of  the 
grounds  of  his  decision,  and  at  the  request  of  any  party  inter- 
ested, or  of  the  court,  the  Commissioner  and  the  examiners 
may  be  examined  under  oath,  in  explanation  of  the  principles 

1  Commissioner     of     Patents     v.  303,  1872. 

Whiteley,  4  Wallace,  533,  1866.  &  Hazelip   v.    Richardson,    10  Off. 

9  Hammond's  Appeal,  2  Off.  Gaz.  Gaz.  747,  1876. 

57,  1872.  •  Commissioner     of     Patents     v. 

3  Mewes,  Appeal,  2  Off.  Gaz.  617,  Whiteley,  4  Wallace,  532,  1866. 
1872.  ">  Revised  Statutes,  Section  4912. 

4  Brunner's   Appeal,    1   Off.    Gaz. 


CHAP.   VI.]  APPLICATIONS.  87 

of  the  thing  for  which  a  patent  is  demanded.1  The  court, 
thereupon,  hears  the  case  in  a  summary  way,  on  the  evidence 
produced  before  the  Commissioner,  and  confines  its  revision 
of  the  Commissioner's  decision  to  the  points  set  forth  in  the 
applicant's  reasons  of  appeal.  Having  decided  the  questions 
involved,  the  court  gives  the  Commissioner  a  certificate  of  its 
proceedings  and  decisions,  which,  being  entered  of  record  in 
the  Patent  Office,  governs  the  further  proceedings  in  the  case. 
!No  such  decision,  however,  precludes  any  person  from  con- 
testing the  validity  of  any  patent  issued  in  pursuance  there- 
of, in  any  court  wherein  that  validity  may  be  called  in  ques- 
tion.5 

§  134.  "Whenever  a  patent  is  refused  by  the  Commissioner 
of  Patents,  or  by  the  Supreme  Court  of  the  District  of  Co- 
lumbia, on  appeal  from  the  Commissioner,  the  applicant  may 
file  a  bill  in  equity  in  any  United  States  Circuit  Court  hav- 
ing or  acquiring  jurisdiction  of  the  parties.3  The  complain- 
ant in  that  hill  may  be  the  inventor- applicant,  or,  in  case  of 
an  assignment  of  the  invention,  he  may  be  the  assignee, 
because  the  latter  is  considered  to  be  an  applicant  within  the 
meaning  of  the  law  on  this  subject.4  If  there  is  no  opposing 
party,  a  copy  of  the  bill  is  required  to  be  served  on  the  Com- 
missioner. The  court  thereupon  has  jurisdiction  to  adjudge 
that  the  applicant  is  entitled  to  receive  a  patent  for  his  inven- 
tion, as  specified  in  his  claim,  or  for  any  part  thereof,  as  the 
facts  in  the  case  may  appear  to  be  ;  and  such  an  adjudication, 
if  made,  authorizes  the  Commissioner  to  issue  such  a  patent, 
on  the  applicant's  filing  in  the  Patent  Office  a  copy  of  the  ad- 
judication, and  otherwise  complying  with  the  requirements  of 
the  law.5  But  no  court  has  any  jurisdiction  to  restrain  the 
Commissioner  from  issuing  a  patent  to  the  defendant,  in  any 
such  case  as  those  treated  in  this  section." 

In  order  to  decide  the  issues  of  such  a  bill  in  equity  as  is 

1  Revised  Statutes,  Section  4913.  4  Gay   v.    Cornell ,  1  Blatch.   508, 

8  Revised   Statutes,  Section  4914  ;  1849. 
Fry  v.  Quinlan,  13  Blatch.  205,  1875.  6  Revised  Statutes,  Section  4915. 

3  Revised  Statutes,  Section  4915,          «  Whipple  v.  Miner,  15  Fed.  Rep. 

and  Section  629,  1T  9.  117,  1883. 


88  APPLICATIONS.  [CHAP.  vi. 

treated  in  this  section,  the  court  where  the  hill  is  pending 
will  take  testimony,  and  any  other  admissible  evidence,  ac- 
cording to  the  course  of  courts  of  equity,  and  will  also  con- 
sider whatever  was  before  the  Patent  Office  in  the  proceed- 
ings which  resulted  in  the  refusal  to  grant  a  patent,  and  if  the 
case  has  been  before  the  Supreme  Court  of  the  District  of 
Columbia,  will  also  consider  the  proceedings  which  took  place 
in  that  tribunal.1  The  litigation  explained  in  this  section,  is 
therefore  original  and  not  appellate  litigation.  It  may  be  re- 
sorted to,  as  a  concurrent  remedy  with  appeal  to  the  Supreme 
Court  of  the  District  of  Columbia,  whenever  the  Commis- 
sioner affirms  an  adverse  decision  of  the  board  of  examiners- 
in-chief.  Where  an  application  is  brought  before  the  Com- 
missioner otherwise  than  by  such  an  appeal,  and  he  withholds 
the  patent  by  virtue  of  his  general  supervisory  authority,  the 
remedy  now  under  consideration  is  the  only  one  to  which  the 
applicant  can  resort,  for  no  appeal  lies  to  the  Supreme  Court 
of  the  District  of  Columbia,  nor  can  any  writ  of  mandamus 
be  granted  by  that  tribunal,  to  compel  the  Commissioner  to 
issue  a  patent  in  such  cases.9 

§  135.  The  right  to  amend  applications  for  patents  is  one 
of  great  value  and  frequent  exercise,  but  it  has  never  been 
expressly  established  by  any  statute.  No  statute  prior  to  that 
of  1836  even  mentioned  the  subject,  and  that  statute  only 
provided  that  whenever  it  appeared  to  the  Commissioner,  that 
one  or  more  of  the  claims  of  an  application  were  inadmissible 
for  want  of  novelty,  or  that  the  description  was  defective  and 
insufficient,  he  should  notify  the  applicant  thereof,  and  should 
furnish  him  with  such  information  as  might  be  useful  in 
judging  of  the  propriety  of  altering  his  specification,  so  as  to 
exclude  that  part  of  the  subject  matter  found  not  to  be  new.' 
No  change  relevant  to  this  point  was  made  in  the  statute  till 
1870,  when,  in  the  place  of  the  foregoing  provision,  it  was 
enacted  that  whenever  any  claim  was  rejected,  for  any 

1  In  re  John  J.  Squire,  3  Bann.  <fe  46,  1875. 

Ard.  137,  1877.  »  5  Statutes  at  Large,  Ch.  357,  Sec- 

8  Hull  v.  Commissioner  of  Patents,  tion  7,  p.  120. 
7  Off.  Gaz.  559,   1875  ;  8  Off.  Gaz. 


CHAP.  VI.]  APPLICATIONS.  89 

reason  whatever,  the  Commissioner  should  notify  the  appli- 
cant thereof,  and  should  furnish  him  with  such  information  as 
might  be  useful  in  judging  of  the  propriety  of  altering  his 
specification.'  The  present  statute  on  the  subject  is  sub- 
stantially identical  with  that  of  1870." 

There  is  no  apparent  material  difference,  at  this  point, 
between  any  of  the  three  statutes,  unless  the  provision  in  that 
of  1836,  relevant  to  the  nature  of  the  amendment  contem- 
plated by  that  section,  constitutes  a  limitation  not  found  in 
either  of  the  others.  The  two  later  statutes  provide  that  the 
Commissioner  shall  furnish  the  applicant  with  such  informa- 
tion as  may  be  useful  in  judging  of  the  propriety  of  altering 
his  specification.  The  earlier  statute  adds  to  that  provision 
the  words  :  "to  embrace  only  that  part  of  the  invention  or 
discovery  which  is  new."  All  three  of  the  statutes  recognize 
the  right  of  an  applicant  to  alter  his  specification,  after  the 
rejection  of  any  claim  therein.  They  differ  from  each  other 
only  in  regard  to  the  kind  of  information  which  they  require 
the  Commissioner  to  furnish  the  applicant,  to  guide  him  in 
the  exercise  of  that  right.  Neither  of  them  furnishes  the 
foundation  of  that  right,  or  limits  that  right  to  cases  where 
the  application  has  been  rejected.  They  all  provide  a  pro- 
ceeding for  such  cases,  but  neither  of  them  negatives  the  ex- 
istence of  such  a  right  in  other  cases. 

§  136.  The  real  foundation  of  the  right  to  amend  applica- 
tions for  patents,  is  found  in  Section  4888  of  the  Revised 
Statutes,  a  section  substantially  identical  with  Section  26  of 
the  Patent  Act  of  18TO,  and  with  the  second  sentence  of 
Section  6  of  the  Patent  Act  of  1836,  and  with  the  middle 
part  of  Section  3  of  the  Patent  Act  of  1793.  Ever  since 
1793,  one  or  another  of  these  four  enactments  has  been  in 
force,  and  has  provided,  in  substance,  that  before  any  invent- 
or shall  receive  a  patent  for  his  invention,  he  shall  file  in  the 
Patent  Office  a  full,  clear,  and  exact  written  description  of 
that  invention.  Ever  since  1836,  one  or  another  of  the  three 

1 16  Statutes  at  Large,  Ch.  230,  Sec-          *  Revised  Statutes,  Section  4903. 
tion  41,  p.  204. 


90  APPLICATIONS.  [CHAP.  VL 

statutes  first  mentioned  has  been  in  force,  and  has  addition- 
ally provided  that  before  any  inventor  shall  receive  a  patent, 
he  shall  particularly  point  out  and  claim  the  part  or  combina- 
tion which  he  claims  as  his  invention.  Now  when  a  statute 
enacts  that  a  thing  shall  be  done  before  a  particular  event  can 
occur,  it  implies  that  it  can  be  done  prior  to  such  an  event. 
An  inventor  may  therefore  do  those  things  before  he 
receives  a  patent.  If  he  fails  in  his  first  attempt  to  furnish  a 
proper  and  adequate  description,  or  to  furnish  proper  and  ad- 
equate claims,  he  may  try  again,  and,  if  necessary,  still  again 
and  again.  If  he  finally  succeeds  in  both,  the  Commissioner 
acquires  jurisdiction  to  grant  him  a  patent,  provided  all  the 
other  requirements  of  the  law  are  also  complied  with.  The 
statute  does  not  attend  to  the  details  of  this  matter.  It  only 
provides  that  at  some  time  before  a  patent  is  issued,  a  proper 
description  and  a  proper  claim  shall  be  filed  in  the  Patent 
Office.  To  what  extent  these  things  must  be  done  at  first,  and 
to  what  extent  and  under  what  circumstances  they  may  be 
done  by  way  of  amendment  of  the  original  papers,  are  matters 
which  Section  483  of  the  Revised  Statutes  relegates  to  the 
regulation  of  the  Commissioner  of  Patents,  subject  to  the  ap- 
proval of  the  Secretary  of  the  Interior.  To  ascertain,  there- 
fore, what  may  and  what  may  not  be  done  by  way  of  amend- 
ments of  applications,  the  true  recourse  is  to  the  rules  of  the 
Patent  Office. 

§  137.  The  applicant  may  amend  before  or  after  the  first 
rejection,  and  lie  may  amend  as  often  as  the  examiner  presents 
any  new  references  or  reasons  for  rejection  ;  but  after  such 
action  on  all  the  claims  as  entitles  the  applicant  to  an  appeal 
to  the  board  of  examiners-in-chief,  no  amendment  is  al- 
lowed, unless  the  applicant  convinces  the  examiner  or  the 
Commissioner  that  there  was  a  sufficient  excuse  for  the  delay 
in  presenting  it.1  Amendments  not  affecting  the  merits  may 
be  made  after  the  patent  is  allowed,  and  even  after  the  final 
fee  is  paid,  provided  those  amendments  are  approved  first  by 
the  examiner,  and  then  by  the  Commissioner." 

1  Patent  Office  Rule  67.  *  Patent  Office  BiUe  77. 


CHAP.  VI.]  APPLICATIONS.  91 

§  138.  In  original  applications  which  are  capable  of  illus- 
tration by  drawing  or  model,  all  amendments  of  the  model, 
drawings,  or  specification,  or  of  additions  thereto,  must  con- 
form to  at  least  one  of  them,  as  they  existed  at  the  time  of 
filing  the  application.  Matter  not  found  in  either,  and  in- 
volving a  departure  from  the  original  invention,  cannot  be  in- 
troduced by  way  of  amendment,  but  can  be  shown  or  claimed 
only  in  a  separate  application.  Where  the  invention  covered 
by  an  application  does  not  admit  of  illustration  by  drawing,  or 
by  model,  amendment  of  the  specification  is  permitted,  upon 
proof,  satisfactory  to  the  Commissioner,  that  the  matter 
covered  by  the  amendment  was  a  part  of  the  original  inven- 
tion.1 When  an  inventor  files  an  application  for  a  patent,  he 
is  regarded  as  applying  for  such  a  patent  as  will  cover  every 
patentable  thing  represented  either  in  the  specification,  draw- 
ing, or  model  of  that  application."  If,  therefore,  his  claims, . 
as  first  submitted  to  the  Commissioner,  do  not  cover  every 
such  thing,  he  may  amend  them  to  whatever  extent  is  neces- 
sary to  make  them  do  so,  or  he  may  add  other  claims  to  ac- 
complish that  purpose. 

§  139.  An  applicant  must  amend  his  specification,  when- 
ever such  amendment  is  required  to  correct  inaccuracy  or  un- 
necessary prolixity  therein,  or  to  secure  correspondence  between 
the  claim  and  the  other  parts  of  the  specification.3  So  also, 
unless  the  original  drawings  and  model  conform  to  certain 
standards  of  artistic  and  mechanical  excellence  set  forth  in 
the  rules,  the  applicant  must  furnish  amended  drawings  and 
an  amended  model  which  do  conform  to  those  require- 
ments.* 

§  140.  An  interference  is  a  proceeding  carried  on  in  the 
Patent  Office,  for  the  purpose  of  determining  the  question  of 
priority  between  two  or  more  parties,  each  of  which  is  seek- 
ing a  patent  for  the  same  invention  ;  or  between  two  or  more 
parties,  at  least  one  of  which  is  seeking  a  patent  for  an  inven- 

1  Patent  Office  Rule  69.  8  Patent  Office  Rule  70. 

1  Singer  v.  Braunsdorf,  7  Blatch.          *  Patent  Office  Rules  48  to  58. 
532,  1870. 


92  APPLICATIONS.  [CHAP.  vi. 

tion  already  covered  by  a  patent  which  has  not  yet  expired.1 
The  proceedings  in  interferences  are  governed  by  an  elabo- 
rate code  of  Patent  Office  rules,  to  which  the  practitioner,  in 
such  cases,  will  necessarily  resort  for  detailed  information.* 
It  is  unnecessary  to  explain  those  rules  in  this  text-book,  bat 
it  is  expedient  to  set  down  in  this  connection  the  relevant 
rules  of  law,  which  rest  directly  upon  the  statutes  and  deci- 
sions for  their  sanction. 

§  141.  There  is  no  limit  to  the  number  of  interferences  to 
which  an  application  may  be  subjected  ;  and  if  a  patent  is  is- 
sued without  going  through  every  such  proceeding,  previously 
ordered  by  the  Commissioner,  that  patent  will  be  void.3  The 
ordinary  rules  of  evidence  which  are  applied  in  United  States 
courts  are  used  in  interference  cases.4  This  includes  the 
rules  which  relate  to  dispensing  with  evidence  of  facts  of  pub- 
.lic  notoriety/  The  doctrines  of  estoppel  also  apply  in  these 
contests,  in  the  same  manner  in  which  they  apply  in  other 
litigious  proceedings.8 

§  142.  No  decision  of  the  Commissioner,  in  any  interfer- 
ence case,  is  pleadable  as  res  judicata  in  any  action  in  any 
court.7  Such  a  decision  merely  settles  the  immediate  action 
of  the  Patent  Office.  If  it  is  made  between  two  or  more  ap- 
plications, a  patent  is  granted  to  the  inventor  decided  to  be 
first,  and  no  patent  is  granted  to  either  of  the  others.  If  it  is 
made  between  an  application  and  a  patent,  and  is  made  in 
favor  of  the  application,  the  Commissioner  will  grant  a  patent 
thereon,  but  he  cannot  recall  the  patent  already  issued.  In 
such  a  case,  the  rival  inventors  may  litigate  their  interference 
controversy  anew,  on  the  equity  side  of  any  United  States 
Circuit  Court  which  has  or  can  acquire  jurisdiction  of  the 


1  Revised  Statutes,  Section  4904  ;  4  Berry  v.   Stockwell,  9  Off.  Gaz. 

Patent     Office     Rule     92  ;     United  404,  1876. 

States  v.  Commissioner  of  Patents,  5  Anson  v.  Woodbury,  12  Off.  Gaz. 

7  Off.  Gaz.  603,  1875.  1,  1877. 

»  Patent  Office  Rules  92  to  127,  «  Berry  v.  Stockwell,  9  Off.  Gaz. 

and  141  and  142.  404,  1876. 

3  Potter  v.  Dixon,  2  Fisher,  381,  '  Union  Paper-Bag  Machine  Co.  v. 

1863.  Crane,  1  Bann.  &  Axd.  494. 


CHAP.  VI.]  APPLICATIONS.  93 

parties.1  That  kind  of  litigation  constitutes  the  subject  of 
the  chapter  on  interfering  patents ;  the  thirteenth  chapter  of 
this  book.  Or  the  question  of  priority  between  the  two  in- 
ventors may  be  litigated  afresh  in  any  infringement  suit, 
brought  by  one  of  them  against  the  other.  If,  in  such  a  case 
as  that  under  present  consideration,  it  had  happened  that  the 
successful  applicant  had  filed  his  application  before  the  inter- 
fering patent  was  granted,  that  patent  would  not  have  been 
granted  at  all,  unless  the  Patent  Office  decision  on  the  inter- 
ference had  been  reversed  by  some  higher  authority.  In 
that  event  the  successful  applicant  would  not  have  been 
liable  to  any  interference  suit,  or  any  infringement  suit, 
brought  against  him  by  his  rival ;  for  his  rival  would,  in  that 
event,  have  no  patent  upon  which  to  base  a  suit  of  either  of 
those  kinds.  For  this  reason,  as  well  as  for  others,  every  in- 
ventor who  desires  to  secure  a  patent  for  an  invention,  should 
make  his  application  therefor  as  soon  as  possible  after  mak- 
ing that  invention.  If,  however,  that  invention  requires 
time  in  reaching  maturity,  the  inventor  may  prevent  the  is- 
suing of  any  interfering  patents  in  the  mean  time,  by  filing  a 
caveat  in  the  Patent  Office. 

§  143.  A  caveat  is  a  document  in  which  an  inventor  states 
the  function  and  the  distinguishing  characteristics  of  the  in- 
vention to  which  it  refers,  and  prays  protection  for  his  right 
thereto,  until  he  shall  have  matured  that  invention.  A  caveat 
remains  in  force  only  one  year,  and  while  it  is  in  force  its 
only  statutory  function  is  to  prevent  the  issuing  of  any  patent 
to  another  for  the  same  invention,  until  after  interference 
proceedings  in  the  Patent  Office  shall  have  decided  the  ques- 
tion of  priority.4  If  an  invention  is  fully  described  in  a 
caveat,  then  that  caveat  will  constitute  evidence  showing 
that  invention  to  have  been  made  at  least  as  early  as  the 
caveat  was  filed.  This,  however,  is  an  incidental  and  not  a 
statutory  function  of  such  a  document,  and  it  cannot  be  per- 
formed by  any  caveat  which  is  not  complete  enough  in  its 

1  Revised  Statutes,  Section  4918.         Bell  v.  Daniels,  1  Fisher,  372,  1858. 
1  Revised  Statutes,  Section  4902  ; 


94  APPLICATIONS.  [CHAP.  vi. 

description  to  enable  a  skillful  mechanic,  without  inventing 
anything  himself,  to  construct  a  specimen  of  the  invention  to 
which  the  caveat  refers. 

§  144.  No  appeal  lies,  in  any  interference  case,  from  the 
Commissioner  of  Patents  to  the  Supreme  Court  of  the  Dis- 
trict of  Columbia.1  The  decision  of  the  Commissioner  in 
any  such  case,  however,  may  be  reviewed  by  means  of  a  bill 
in  equity,  filed  in  any  United  States  Circuit  Court  having,  or 
receiving,  jurisdiction  of  the  parties.8  "Whether  any  appeal 
lies  to  the  Supreme  Court  of  the  United  States  from  any 
decree  of  any  Circuit  Court,  rendered  in  any  such  case,  or  in 
any  other  case  brought  by  authority  of  the  same  statute,  is  an 
unsettled  question.  Appeals  are  demandable  from  the  Cir- 
cuit Courts  to  the  Supreme  Court  in  all  equity  cases  "  touch- 
ing patent  rights. "  3  Such  is  the  provision  of  the  Revised 
Statutes,  and  such  was  the  provision  of  t*he  Patent  Act  of 
1870. 4  Prior  to  the  approval  of  the  last  mentioned  statute, 
such  appeals  were  allowable  in  all  cases  "arising  under  any 
law  of  the  United  States,  granting  or  confirming  to  inventors 
the  exclusive  right  to  their  inventions,"  and  were  demand- 
able  in  a  portion  of  such  cases.5  This  last  quoted  phraseology 
was  probably  wide  enough  to  cover  cases  brought  in  the  Cir- 
cuit Courts  to  review  adverse  decisions  of  the  Commissioner 
of  Patents,  or  of  the  Supreme  Court  of  the  District  of  Co- 
lumbia, on  applications  for  letters  patent  ;  but  it  does  not  fol- 
low that  the  present  statute  is  wide  enough  for  that  purpose. 
Cases  brought  under  Section  4915  of  the  Revised  Statutes 
are  not  cases  "touching  patent  rights."  They  are  cases 
touching  rejected  applications  for  patent  rights.  If,  there- 
fore, they  are  held  to  be  appealable  to  the  Supreme  Court, 
they  must  be  so  held,  by  virtue  of  a  loose  construction  of  the 
statute  regulating  appeals. 

§  145.    An  application  for  a  patent  may  be  abandoned. 

'  Revised  Statutes,  Section  4911.  *  16  Statutes  at  Large,  Ch.  230,  Sec- 

8  Bevised  Statutes,  Section  4915,  tion  56,  p.  207. 

and  Sec.  629,   IT  9  ;  Section  134  of  8  5  Statutes  at  Large,  Ch.  357,  Sec- 

this  book.  tion  17,  p.  124. 

*  Revised  Statutes,  Section  699. 


CHA1'.   VI.]  APPLICATIONS.  95 

That  abandonment  may  be  actual  or  it  may  be  constructive. 
The  facts  which  constitute  an  actual  abandonment  of  an  appli- 
cation, will  also  constitute  an  actual  abandonment  of  the  in- 
vention covered  thereby  ;  but  a  constructive  abandonment  of 
an  application,  may  or  may  not  work  a  constructive  abandon- 
ment of  the  invention. 

Actual  abandonment  of  an  application  does  not  always  fol- 
low from  the  fact  that  the  applicant  withdrew  it  from  the 
Patent  Office.  If,  when  withdrawing  it,  he  intends  to  file  a 
new  application  for  the  same  invention,  and  accordingly  does 
so,  the  two  are  held  to  constitute  one  continuous  application 
within  the  meaning  of  the  law.1  This  doctrine  applies, 
even  if  the  new  application  is  not  filed  till  long  after  the  old 
one  was  withdrawn,  provided  there  was  no  laches  chargeable  to 
the  applicant  on  account  of  the  delay.2 

Nor  does  actual  abandonment  of  an  application  necessarily 
follow  from  the  fact  that  it  was  rejected  by  the  Patent  Office, 
and  then  allowed  to  lie  dormant  by  the  applicant.  If,  in  such 
a  case,  the  applicant  always  expected  to  secure  a  patent,  either 
on  the  original  application  or  on  another,  and  if,  without 
laches,  he  made  and  prosecuted  another  application  for  the 
same  invention,  and  secured  a  patent  thereon,  the  two  appli- 
cations are  considered  in  the  eye  of  the  law  to  be  one.3 

Laches,  if  it  intervenes  between  a  withdrawn  or  rejected 
application  and  a  new  application  covering  the  same  inven- 
tion will,  however,  be  fatal  to  any  claim  of  continuity."  It 
will  constitute  evidence  that  the  first  application  was  actually 
abandoned,  and  equally  good  evidence  of  the  actual  abandon- 
ment of  the  invention  itself.5 

§  146.  Constructive  abandonment  of  an  application,  occurs 
whenever  two  years  intervene  between  the  filing  of  the  appli- 

1  Godfrey  v.   Eames,    1    Wallace,  McConnick,    5   Bann.   &  Ard.    244, 

317,  1863.  1880. 

*  Howes   v.   McNeal,   3  Bann.   &  4  Bevin  v.  Bell  Co.  9  Blatch.  61, 

Ard.  376,  1878.  1871  ;  Weston  u.  White,  13  Blatch. 

3  Smith  v.  Dental  Vulcanite    Co.  452,  1876. 

93  U.  S.  500,  1876  ;  Blandy  v.  Grit-  B  Planing  Machine  Co.  v.  Keith, 

nth,  3  Fisher,  617,  1869  ;  Graham  v.  101  U.  S.  484,  1879. 


96  APPLICATIONS.  [CHAP.  vi. 

cation  and  its  being  made  complete  enough  to  entitle  it  to  ex- 
amination, according  to  the  rules  of  the  Patent  Office  ;  and 
such  an  abandonment  also  occurs  if  the  applicant  allows  two 
years  to  pass  without  prosecuting  his  application  after  any 
particular  action  is  taken  thereon  by  the  Patent  Office,  and 
notified  to  him,  provided,  in  either  case,  the  Commissioner  of 
Patents  is  not  convinced  that  the  delay  was  unavoidable.1  If 
he  is  so  convinced,  he  may  condone  the  delay  by  granting  a 
patent  ;  and  if  he  grants  a  patent,  his  decision  on  the  point  is 
conclusive.4 

All  applications,  also,  which  were  rejected  or  withdrawn 
prior  to  July  8,  1870,  and  not  revived  within  six  months  after 
that  day,  were  thereby  constructively  abandoned.3  The 
statutory  provision  just  cited,  did  not  operate  to  renew  any 
right  to  any  abandoned  invention.4  Nor  did  it  fix  any  time, 
after  which  any  invention  should  be  held  to  be  abandoned, 
for  it  provided  no  result  from  six  months'  delay,  except  that 
the  application  should  be  held  to  have  been  abandoned. 

So,  also,  constructive  abandonment  of  his  application  oc- 
curs, when  any  applicant  fails  to  pay  the  final  fee  within  six 
months  from  the  time  at  which  a  patent  is  allowed,  and  notice 
of  such  allowance  is  sent  to  him  or  to  his  agent. 6  The  six 
months  referred  to  in  this  paragraph  are  lunar,  and  not  cal- 
endar months.' 

§  147.  Constructive  abandonment  of  an  application,  will 
work  constructive  abandonment  of  the  invention  covered 
.thereby,  where  the  abandonment  of  the  application  arose  from 
either  of  the  causes  stated  in  the  first  paragraph  of  the  last 
preceding  section,  if  no  new  application  is  filed  soon  enough 
to  independently  avoid  the  statute  relevant  to  public  use  or 
sale  more  than  two  years  before  application  for  a  patent.7 
The  same  thing  is  true,  for  the  same  reason,  where  the  aban- 

1  Eevised  Statutes,  Section  4894.  101  U.  S.  483,  1879. 

s  M'Millin  v.   Barclay,   5  Fisher,          6  Revised  Statutes,  Section  4885. 
199,  1871.  *  Section  125  of  this  book. 

8  16  Statutes  at  Large,  Ch.  230,  Sec-          '  Lindsay  v.  Stein,  10  Fed.  Rep. 

tion  35,  p.  202.  913,  1882. 

4  Planing  Machine  Co.   v.   Keith, 


CHAP.  VI.]  APPLICATIONS.  97 

donment  of  the  application  arose  from  the  cause  stated  in  the 
second  paragraph  of  the  last  preceding  section.  But  the  same 
reason  does  not  exist  relevant  to  the  cause  of  constructive 
abandonment  stated  in  the  third  paragraph  of  that  section. 
If,  therefore,  an  applicant  fails  to  pay  the  final  fee  within  six 
months  after  an  allowance  of  a  patent  to  him,  and  if  he  files  a 
new  application  for  a  patent,  on  the  same  invention,  within 
two  years  after  that  allowance,  but  more  than  two  years  after 
that  invention  was  first  in  public  use  or  on  sale,  the  question 
arises  whether  the  constructive  abandonment  of  the  first  ap- 
plication, will  prevent  the  two  applications  from  being  regard- 
ed as  one,  on  the  principles  stated  in  the  second  and  third 
paragraphs  of  Section  145  in  this  chapter.  No  answer  to  that 
question  is  found  in  any  adjudicated  case,  and  as  the  point  is 
unlikely  to  arise,  and  as  its  solution  involves  much  argument, 
no  answer  is  attempted  in  this  book. 

But  in  every  case  where  a  new  application  is  made  within 
two  years  after  the  invention  was  first  in  public  use  or  on 
sale,  a  patent,  if  granted  on  that  new  application,  will  not  be 
unfavorably  affected  by  the  fact  that  a  former  application  was 
made,  and  was  constructively  abandoned. 

§  148.  Patents  are  authorized  by  law,  only  on  compliance 
with  the  statutory  prerequisites  to  their  issue.  The  Commis- 
sioner has  therefore  no  jurisdiction  to  grant  any  patent,  except 
where  all  those  prerequisites  have  been  substantially  perform- 
ed. If  he  inadvertently  grants  a  patent  in  any  other  case,  he 
exceeds  his  jurisdiction,  and  it  is  therefore  open  to  every  per- 
son who  is  sued  as  an  infringer  of  that  patent,  to  successfully 
defend  against  such  an  action,  by  pleading  and  proving  the 
particular  fault  or  omission  with  which  the  applicant  was 
chargeable.1  In  all  cases,  however,  where  the  application 
was  complete  enough  to  give  the  Commissioner  jurisdiction, 
the  patents  will  be  unaffected  by  evidence  that  the  Commis- 
sioner was  improvident  or  injudicious  in  the  exercise  of  his 
discretionary  powers  over  these  applications.  If,  for  cxam- 

1  Grant  v.  Raymond,  6  Peters,  218,  1880  ;  Ransom  v.  New  York,  1  Fish- 
1832  ;  Parks  v.  Booth,  102  U.  S.  101,  er,  257,  1856. 


98  APPLICATIONS.  [CHAP.  vi. 

pie,  he  omits  to  require  that  specimens  of  the  ingredients  shall 
be  furnished,  with  a  particular  application  for  a  patent  for  a 
composition  of  matter,  it  is  not  open  to  any  infringer  to  show 
that  the  public  interest  would  have  been  better  subserved  had 
such  a  requirement  been  made.1  The  same  rule  also  governs 
the  same  point  in  cases  where  the  Commissioner  omits  to  require 
a  model.2  But  it  is  probably  open  to  any  defendant  to  defeat 
a  recovery  for  infringement,  by  pleading  and  proving  that  no 
drawing  of  the  invention  was  filed  in  the  Patent  Office,  and 
that  the  nature  of  the  case  admitted  of  drawings.  This  must 
be  the  law,  unless  the  Commissioner  is  the  sole  and  final  judge 
of  this  last  point  of  fact  ;  and  it  is  not  probable  that  Congress 
intended  to  make  him  so,  for  no  such  intention  is  expressed 
in  the  statute,*  and  no  such  intention  is  consistent  with  public 
policy. 

1  Tarr  v.  Folsom,  1  Bann.  &  Aid.  2  Revised  Statutes,  Section  4891. 

24,  1874.  3  Revised  Statutes,  Section  4889. 


CHAPTER  VII. 
LETTERS    PATENT. 


149.  No   exclusive  right  to   inven- 
tions, at  common  law. 

150.  Constitutional   exclusive    right 
to    inventions    in    the    United 
States. 

151.  Patents  are  property. 

152.  Dignity    of    property    in   pat- 
ents. 

153.  Patents  are  not  odious  monopo- 
lies. 

154.  Patent  rights  are  absolute,  not 
qualified. 

155.  Patent  rights  are  beyond  State 
interference. 

156.  Patent  rights  are  not  subject  to 
common    law    executions,    but 
may  be  subjected  by  creditors' 
bills  in  equity. 

157.  Patent  rights  are  as  exclusive 
of  the  government,  as  they  are 
of  any  citizen. 

158.  Patents  do  not  cover  specimens 
purchased  of  the  inventor,    or 
made   with  his  knowledge   and 
consent,      before      application 
therefor. 

159.  The  foregoing  rule  has  no  ap- 
plication to  patents  for  process- 
es. 

160.  Territorial    scope     of     United 
States  patents. 

161.  Operation    of     United     States 
patents  on  the  decks  of  ships. 

162.  Duration  of  patents. 

163.  Duration  of  United  States  pat- 
ents for  inventions  first  patent- 


ed in  a  foreign  country,  accord- 
ing to  the  statute  of  1870. 

164.  Duration  of  United  States  pat- 
ents for  inventions  first  patent- 
ed in  a  foreign  country,  accord- 
ing to  the  statute  of  1839. 

165.  Duration  of  United  States  pat- 
ents for  inventions  first  patent- 
ed in  a  foreign  country,  accord-' 
ing  to  the  statute  of  1861. 

166.  First  opinion  of  the  question 
stated  in  Section  165. 

167.  Second  opinion  of  the  question 
stated  in  Section  165. 

1 68.  Third  opinion  of  the  question 
stated  in  Section  165. 

169.  Review  of  the  three   opinions 
of  the  question  stated  in  Section 
165. 

170.  Beginning     of     the    terms    of 
United  States  patents. 

171.  To    whom    letters    patent    are 
granted  by  the  government. 

172.  Letters  patent  as  documents. 

173.  The  specification. 

174.  The  description. 

175.  The  description. 

176.  The  claim  or  claims. 

177.  The  claim  or  claims. 

178.  Particularity     in     descriptions 
and  claims,  are  conditions  pre- 
cedent to  validity. 

179.  Questions  of  sufficiency  of  par- 
ticularity of    descriptions    and 
claims,  are  questions  of  fact  and 
not  of  law. 


100 


LETTERS    PATENT. 


[CHAP.  VII. 


180.  Plurality  of  inventions  in  one 
letters  patent. 

181.  Construction  of  letters  patent. 

182.  Claims  to  be  construed  in  the 
light  of  descriptions. 

183.  Construction      of       functional 
claims. 

184.  Claims   construed  in   the  light 
of  the  state  of  the  art. 

185.  Proper  liberality   of  construc- 
tion. 

186.  Proper  strictness  of  construc- 
tion. 


187.  Construction    in   the  light  of 
contemporaneous     construction 
of  the  inventor. 

188.  Construction    in    the  light  of 
contemporaneous  statutes. 

189.  Questions  of   construction  are 
questions  of  law  and  not  of  fact. 

190.  Letters  patent  presumed  to  be 
for  same   invention  as  the  ap- 
plication therefor. 

191.  Letters  patent  are  constructive 
notice  of  their  contents  to  every 
person. 


§  149.  No  inventor  has  any  special  right  to  his  invention 
at  common  law.1  This  is  not  a  virtue  in  that  law.  It  is  an 
imperfection  ;  an  omission.  That  omission  is  due  to  the  fact 
that  the  common  law  came  into  being  in  the  middle  ages,  and 
in  England.  New  and  useful  inventions  were  seldom  pro- 
duced in  those  ages,  and  most  of  those  which  were  pro- 
duced, were  produced  in  Italy  or  on  the  continent  of  Europe. 
There  was  little  or  no  occasion  or  opportunity  in  England, 
for  the  creation  or  recognition  of  any  exclusive,  or  otherwise 
paramount,  customary  right  in  inventions.  Even  in  those 
countries  where  new  and  useful  things  were  more  frequently 
invented,  their  inventors  were  oftener  persecuted  as  heretics 
than  rewarded  as  benefactors.  Despotic  kings  were  wont,  in 
many  countries,  to  confer  monopolies  upon  their  favorites,  re- 
gardless of  any  meritorious  right  to  the  things  monopolized  ; 
and  it  sometimes  happened  in  England  and  elsewhere,  that  in 
pursuance  of  this  practice,  a  monopoly  of  an  invention  was 
granted  to  its  true  inventor.  Such  a  grant,  however,  was 
always  a  matter  of  kingly  grace,  arid  never  a  matter  of  legal 
right.  In  the  reign  of  James  the  First,  the  English  parlia- 
ment limited  this  exercise  of  royal  prerogative  to  cases  of  in- 
ventions ;  and  thus  laid  the  foundation  of  the  patent  laws  of 
England.  The  limiting  statute  did  not  purport  to  confer  upon 
inventors,  any  inchoate  right  which  they  might  perfect  and 


1  Brown  v.  Duchesne,  19  Howard, 
195,     1856  ;     American     Hide     and 


Leather   Splitting    Machine  Co.   v. 
Machine  Co.  4  Fisher,  294,  1870. 


CHAP.   VII.]  LETTERS    PATENT.  101 

make  absolute  by  proceeding  in  any  manner  pointed  out  by 
law.  It  recognized  the  power  of  the  king  to  secure  to  any  in- 
ventor an  exclusive  right  to  his  invention,  if  his  royal  pleasure 
prompted  him  so  to  do.  But  the  exercise  of  that  power  was 
so  infrequent  for  more  than  a  century,  that  Blackstone,  in 
his  Commentaries  on  the  Laws  of  England,  devoted  but  one 
sentence  to  the  branch  pertaining  to  patents  for  inventions. 

§  150.  In  the  United  States  of  America,  the  superior  right 
of  an  inventor  to  his  invention,  has  a  far  better  foundation 
than  could  be  furnished  by  the  prerogative  of  any  king. 
That  foundation  is  the  consent  of  the  people  of  the  United 
States  :  a  consent  primarily  expressed  in  the  Federal  Consti- 
tution, and  elaborately  defined  in  the  federal  statutes.  The 
Constitution  was  established  as  the  supreme  law  of  the  United 
States,  on  the  twenty-first  day  of  June,  1788.  It  conferred 
power  upon  Congress  to  promote  the  progress  of  the  useful 
arts,  by  securing,  for  limited  times,  to  inventors,  the  exclusive 
right  to  their  respective  inventions.1  In  exercise  of  that 
power,  Congress  on  the  tenth  day  of  April,  1790,  enacted  the 
first  federal  statute  on  the  subject  ;  and  provided  therein 
that  the  exclusive  right  in  contemplation,  should  be  secured 
to  the  respective  inventors,  by  means  of  a  written  grant  from 
the  United  States,  to  be  named  letters  patent.*  It  is  the  office 
of  this  chapter  to  explain  the  nature,  the  extent,  and  the 
duration  of  the  right  secured  by  such  a  document ;  to  out- 
line the  general  form  and  necessary  characteristics  of  such  a 
document  itself  ;  and  to  set  forth  the  rules  by  which  such 
documents  are  properly  construed. 

§  151.  Patent  rights  are  property.3  Therefore  their  own- 
ers cannot  be  constitutionally  deprived  of  those  rights,  with- 
out due  process  of  law.4'  Due  process  of  law  includes  the 
constitutional  judgments  and  decrees  of  courts  ;  but  it  does 

1  Article  1,  Section  8.  96,  1876  ;  Cammeyer  v.  Newton,  94 

4  1  Statutes  at  Large,  Ch.  7,  p.  109.  U.  S.  226,  1876  ;  James  v.  Campbell, 

8  Brown  v.  Duchesne,  19  Howard,  104  U.  S.  357,  1881. 

195,  1856  ;  Seymour  v.  Osborne,  11  4  Fifth  Amendment  to  the  Consti- 

Wallace,    533,    1870 ;     Consolidated  tution. 

Fruit  Jar  Co.  ,  Wright,  94   U.  S.  LIBRARY    OF 


NEW  YORK  COUNTY 
UWY£KS  ASSC 


102  LETTERS    PATENT.  [CHAT.   VH. 

not  include  any  act  of  Congress,  or  of  any  other  legislature.1 
Patent  rights,  once  vested,  are  therefore  incapable  of  being 
divested  by  act  of  Congress."  Nor  can  Congress  do  in- 
directly, that  which  it  is  forbidden  to  do  with  directness.  It 
cannot  destroy  nor  seriously  impair  the  value  of  a  patent 
right,  under  the  guise  of  altering  or  repealing  the  existing 
remedies  applicable  to  its  enforcement,  any  more  than  it  can 
so  treat  any  other  kind  of  property.3 

§  152.  The  right  of  property  which  an  inventor  has  in  his 
invention,  is  excelled  in  point  of  dignity,  by  no  other  prop- 
erty right  whatever.  It  is  equalled  in  point  of  dignity, 
only  by  the  rights  which  authors  have  in  their  copyrighted 
books.  The  inventor  is  not  the  pampered  favorite  or  bene- 
ficiary of  the  government,  or  of  the  nation.  The  benefits 
which  he  confers,  are  greater  than  those  which  he  receives. 
He  does  not  cringe  at  the  feet  of  power,  nor  secure  from 
authority  an  unbought  privilege.  He  walks  everywhere 
erect,  and  scatters  abroad  the  knowledge  which  he  created. 
He  confers  upon  mankind  a  new  means  of  lessening  toil,  or 
of  increasing  comfort  ;  and  what  he  gives  cannot  be  de- 
stroyed by  use,  nor  lost  by  misfortune.  It  is  henceforth  an  in- 
destructible heritage  of  posterity.  On  the  other  hand,  he 
receives  from  the  government,  nothing  which  costs  the  govern- 
ment or  the  people  a  dollar  or  a  sacrifice.  He  receives  noth- 
ing but  a  contract,  which  provides  that  for  a  limited  time  he 
may  exclusively  enjoy  his  own.  Compared  with  those  who 
acquire  property  by  devise  or  inheritance  ;  compared  with 
those  who  acquire  property  by  gift  or  marriage  ;  compared 
with  those  who  acquire  property  by  profits  on  sales,  or  by  in- 
terest on  money  ;  the  man  who  acquires  property  in  inven- 
tions, by  creating  things  unknown  before,  occupies  a  position 
of  superior  dignity.  Even  the  man  who  creates  value  by 
manual  labor,  though  he  rises  in  dignity  above  the  heir,  the 

1  Barren    v.  Baltimore,   7  Peters,  ard,  202,  1843. 

247,     1833  ;    Kent's    Commentaries,  3  Green  v.  Biddle,  8  Wheaton,  75, 

Lecture  24,  p.  13  ;  Taylor  v.  Porter,  1823  ;  Bronson  v.  Kinzie,  1  Howard, 

4  Hill  (N.  Y.)  147,  1843.  317,  1843. 

*  McClurg  v.  Kingsland,  1   How- 


CHAP.   VII.]  LETTERS   PATENT.  103 

donee,  the  merchant,  and  the  money-lender,  falls  in  dignity 
below  the  author  and  the  inventor.  The  inventor  of  the 
reaper  is  entitled  to  greater  honor  than  his  father  who  used 
the  grain  cradle  ;  and  the  inventor  of  the  grain  cradle  is  en- 
titled to  greater  honor  than  his  ancestors,  who,  for  a  hundred 
generations,  had  used  the  sickle.  Side  by  side  stand  the  in- 
ventor arid  the  author.  Their  labor  is  the  most  dignified  and 
the  most  honorable  of  all  labor  ;  and  the  resulting  property  is 
most  perfectly  theirs. 

Lord  BACON  gave,  .the  weight  of  his  opinion,  to  views  some- 
what similar  to  the  foregoing.  The  following  is  a  translation 
of  one  of  his  Latin  paragraphs. 

"  The  introduction  of  great  inventions  appears  one  of  the 
most  distinguished  of  human  actions,  and  the  ancients  so  con- 
sidered it  ;  for  they  assigned  divine  honors  to  the  authors  of 
inventions,  but  only  heroic  honors  to  those  who  displayed 
civil  merit  (such  as  the  founders  of  cities  and  empires,  legisla- 
tors, the  deliverers  of  their  country  from  lasting  misfortunes, 
the  quellers  of  tyrants  and  the  like).  And  if  any  one  rightly 
compare  them,  he  will  find  the  judgment  of  antiquity  to  be  cor- 
rect ;  for  the  benefits  derived  from  inventions  may  extend  to 
mankind  in  general,  but  civil  benefits  to  particular  lands 
alone  ;  the  latter,  moreover,  last  but  for  a  time,  the  former 
forever.  Civil  reformation  seldom  is  carried  on  without  vio- 
lence and  confusion,  while  inventions  are  a  blessing  and  a 
benefit  without  injuring  or  afflicting  any."  1 

§  153.  "  Letters-patent  are  not  to  be  regarded  as  monopo- 
lies, created  by  the  executive  authority  at  the  expense  and  to 
the  prejudice  of  all  the  community  except  the  persons 
therein  named  as  patentees,  but  as  public  franchises  granted 
to  inventors  of  new  and  useful  improvements  for  the  purpose 
of  securing  to  them,  as  such  inventors,  for  the  limited  term 
therein  mentioned,  the  exclusive  right  and  liberty  to  make 
and  use  and  vend  to  others  to  be  used  their  own  inventions, 
as  tending  to  promote  the  progress  of  science  and  the  useful 
arts,  and  as  matter  of  compensation  to  the  inventors  for  their 

1  Novum  Organum,  Book  1,  Section  CXXIX. 


104:  LETTERS   PATENT.  [CHAP.  VII. 

labor,  toil,  and  expense  in  making  tlie  inventions,  and  reducing 
the  same  to  practice  for  the  public  benefit,  as  contemplated 
by  the  Constitution  and  sanctioned  by  the  laws  of  Con- 
gress. ' '  Such  is  the  accepted  doctrine  as  formulated  by  Justice 
CLIFFORD  when  speaking  for  the  Supreme  Court.1  The  same 
ideas  were  more  concisely  expressed  in  an  earlier  case  by 
Justice  DANIEL.*  Speaking  of  the  inventor's  exclusive  right, 
he  said  :  "  This  was  at  once  the  equivalent  given  by  the  pub- 
lic for  benefits  bestowed  by  the  genius  and  meditations  and 
skill  of  individuals,  and  the  incentive  to  further  efforts  for 
the  same  important  objects."  Writing  an  opinion  of  the 
Supreme  Court,  and  referring  to  the  doctrine  of  patents,  Jus- 
tice MILLER  said  :  "  It  is  no  longer  a  scarcely  recognized  prin- 
ciple, struggling  for  a  foothold,  but  it  is  an  organized  system, 
with  well-settled  rules,  supporting  itself  at  once  by  its  utility, 
and  by  the  wealth  which  it  creates  and  commands."  3  These 
opinions  of  the  Supreme  Court  agree,  therefore,  in  holding 
with  all  fair  and  thoughtful  men,  that  patent  rights  are  not 
hurtful  monopolies  ;  but  are  rights  of  property  at  once  digni- 
fied, honorable  and  strong. 

§  154.  A  patent  right  is  an  absolute,  and  not  a  qualified 
right.  During  the  term  of  his  patent,  a  patentee  may,  if  he 
pleases,  decline  to  allow  any  other  person  to  make  use  or 
sell  the  invention  which  it  covers,  no  matter  how  much  that 
other  person  may  be  willing  and  able  to  pay  for  such  a  privi- 
lege. The  patentee  may  do  this,  and  at  the  same  time,  may 
refrain  from  making,  using  and  selling  his  invention  himself.4 
From  July  1832  until  July  1870,  there  was  an  exception  to  this 
rule.  Under  the  statute  of  1Y90,  aliens,  as  well  as  citizens, 
might  receive  United  States  patents  ; 5  but  the  statute  of 
1793,  confined  that  privilege  to  citizens  of  the  United  States." 
The  statute  of  1800  extended  the  right  to  aliens  who  had  resided 

1  Seymour  v.  Osborne,  11  Wallace,  4  Pitts  v.  Wemple,  1  Bissell,  93, 

.533,  1870.  1855. 

4  Kendall  v.  Winsor,  21  Howard,  5  1  Statutes  at  Large,  Ch.  7,  Section 

322,  1858.  1,  p.  109. 

3  Merrill  v.  Yeomans,  94  U.  S.  6 1  Statutes  at  Large,  Ch.  11,  Sec- 

-573,  1876.  tion  1,  p.  318. 


CHAP.   VII.]  LETTERS    PATENT.  105 

two  years  within  the  United  States,  and  provided  that  patent 
rights  should  be  obtained,  used  and  enjoyed  by  such  persons, 
in  as  full  and  ample  a  manner,  and  under  the  same  conditions, 
limitations  and  restrictions,  as  in  the  case  of  citizens.1  That 
continued  to  be  the  state  of  the  law  on  the  point  till  July  13, 
1832  ;  when  Congress  provided  that  still  another  class  of  aliens 
might  have  patents  ;  namely,  aliens  who  were  residents  of  the 
United  States,  and  had  declared  their  intention,  according  to 
law,  to  become  citizens  thereof.  It  was,  however,  expressly 
provided  that  any  patent,  granted  to  an  alien  of  this  class, 
should  determine  and  become  absolutely  void,  without  resort 
to  any  legal  process  to  annul  or  cancel  the  same,  in  case  of 
failure  on  the  part  of  the  patentee,  for  the  space  of  one  year 
from  the  issuing  thereof,  to  introduce  into  public  use  in  the 
United  States  the  invention  covered  by  the  patent ;  or  in  case 
such  public  use  be  discontinued  for  any  period  of  six  months  ; 
or  in  case  of  failure  of  the  patentee  to  become  a  citizen  of 
the  United  States  as  soon  as  the  law  allowed.2  Four  years 
later,  however,  this  statute  was  repealed  by  that  of  1836. 
The  latter  statute  extended  the  right  to  obtain  United  States 
patents  to  all  inventors  ;  but  it  provided  that  an  effectual  de- 
fence to  an  action  for  infringement  might  be  based  on  the 
fact  that  the  patentee,  if  an  alien  at  the  time  the  patent  was 
granted,  had  failed  and  neglected,  for  the  space  of  eighteen 
months  from  the  date  of  the  patent,  to  put  and  continue  on 
sale  to  the  public,  on  reasonable  terms,  the  invention  for  which 
the  patent  issued.3  But  no  such  qualification  of  any  patent 
right  is  contained  in  the  consolidated  Patent  Act  of  1870,4  nor 
in  the  Revised  Statutes  ; 5  so  that  the  rule  stated  at  the  head 
of  this  section  applies  to  nearly  all  existing  patents. 

§  155.  No  State  has  any  power  to  make  a  law  interfering 
with  the  sale  of  any  patent  right ; '  but  every  State  has  power 

1  2  Statutes  at  Large,  Ch.  25,  Sec-  *  16  Statutes  at  Large,  Ch.  230, 

tion  1,  p.  37.  Section  Gl,  p.  208. 

*  4  Statutes  at  Large,  Ch.  203,  Sec-  &  Revised  Statutes,  Section  4920. 

tion  1,  p.  577.  •  Ex,  parte    Robinson,   2    Bissell, 

3  5  Statutes  at  Large,  Ch.  357,  Sec-  313,  1870. 
tions  6  and  15,  pp.  119  and  123. 


1<>G  LETTERS    PATENT.  [CHAP.  VTI. 

to  regulate  the  making,  the  selling  and  the  using  of  the  things 
covered  by  any  patent  right,  to  the  same  extent  that  it  law- 
fully regulates  the  making,  selling  and  using  of  similar  unpat- 
ented  things.  Things  covered  by  patents  are  as  much  subject 
to  the  revenue  laws, '  and  other  public  laws 2  of  a  State  or 
municipality,  as  any  other  things.  A  patent  for  a  dynamite 
powder,  or  for  a  deadly  poison,  or  for  an  explosive  oil,  does 
not  oust  nor  affect  the  power  of  local  authorities  to  prescribe 
the  place  and  manner  of  the  manufacture,  storage  and  sale  of 
those  dangerous  substances.  Nor  does  a  patent  on  a  sewing- 
machine  exempt  the  patentee  from  any  State  tax  on  the 
machines  he  may  make,  use  or  sell  within  the  boundaries  of 
that  State.  The  reason  why  a  State  may  regulate  the  sale  of 
a  patented  thing,  and  may  not  regulate  the  sale  of  the  patent 
covering  that  thing,  is  explainable  as  follows.  A  patentee  has 
two  kinds  of  rights  in  his  invention.  He  has  a  right  to  make, 
use  and  sell  specimens  of  the  invented  thing  ;  and  he  has  a 
right  to  prevent  all  other  persons  from  doing  either  of  those 
acts.  The  first  of  these  rights  is  wholly  independent  of  the 
patent  laws  ;  while  the  second  exists  by  virtue  of  those  laws 
alone.3  A  patentee  therefore  holds  the  first  of  these  rights 
subject  to  the  police  powers,  and  the  taxing  powers,  of  the 
State  ;  while  the  second,  being  the  creature  of  the  laws  of 
Congress,  is  wholly  beyond  State  control  or  interference. 

§  156.  Patent  rights,  being,  as  they  are,  intangible  property, 
cannot  be  seized  and  sold  under  the  authority  of  any  writ  of 
fieri  facias,  or  other  common  law  execution.4  They  may, 
however,  be  reached  by  a  creditor's  bill  in  equity,  and  thus  be 
applied  to  the  payment  of  the  debts  of  the  owners  ;  the  same 
as  trust  property,  choses  in  action,  or  stock  of  a  debtor  in  a 
corporation,  may  be  reached  and  applied.  A  court  of  equity 
may,  in  pursuance  of  its  powers  in  such  cases,  decree 
that  the  debtor  patentee  pay  the  judgment  upon  which  the 

1  Webber  u.  Virginia,    103  U.   S.  ard,  539, 1852. 

347,  1880.  4  Stephens    v.  Cady,   14   Howard, 

4  Patterson  v.  Kentucky,  97  U.  S.  528,  1852  ;  Stevens  v.  Gladding,   17 

505,  1878.  Howard,  447,  1854. 

8  Bloomer  v.  McQuewan,  14  How- 


CHAP.  VII.]  LETTERS    PATENT.  107 

bill  is  based,  or  in  default  thereof,  that  his  patent  right  be 
sold  under  the  direction  of  the  court,  and  an  assignment  thereof 
be  executed  by  him,  and  in  default  of  his  executing  such  an 
assignment,  that  some  suitable  person  be  appointed  trustee  to 
execute  the  same  in  his  place.1 

§  157.  Patent  rights  are  exclusive,  not  only  of  citizens  and 
residents  of  the  United  States  ;  but  also  of  the  government 
itself  and  of  its  agents.  The  government  has  no  more  right 
than  any  private  citizen,  to  make,  use  or  sell  a  patented  in- 
vention, without  the  license  of  the  patentee.2  When  the 
government  grants  letters  patent  for  an  invention,  it  confers 
upon  the  patentee  an  exclusive  property  therein,  which  cannot 
be  appropriated  or  used  by  the  government  itself,  without 
just  compensation,  any  more  than  land  which  has  been  pat- 
ented to  a  private  purchaser  can,  without  compensation,  be 
appropriated  or  used  by  the  government.3 

§  158.  No  patent  right  covers  any  use  or  sale  of  any  speci- 
men of  the  patented  thing,  which  was  purchased  of  the  in- 
ventor, or  made  by  another  with  his  knowledge  and  consent, 
before  his  application  for  a  patent  therefor."  Where  another 
than  the  inventor,  surreptitiously  obtains  knowledge  of  an  in- 
vention, and,  without  the  consent  of  the  inventor,  makes  a 
specimen  of  the  invented  thing  before  any  patent  thereon  is 
applied  for,  that  specimen  is  covered  by  a  patent  for  that  in- 
vention, as  truly  and  as  fully  as  it  would  be  if  it  had  been  made 
by  an  infringer  after  the  date  of  that  patent.  Such  a  case  is 
clearly  outside  of  the  rule  just  stated,  and  of  the  statute  upon 
which  that  rule  is  based.  Indeed  Justice  STOKY,"  and  after- 
ward the  full  Supreme  Court,8  held  such  a  case  to  be  out- 
side the  corresponding  provision  of  the  Patent  Act  of 


1  Ager  v.  Murray,   105  U.  S.  126,  <  Revised  Statutes,  Section   4899  ; 

1881.  Wade  v.  Metcalf,  16  Fed.  Rep.  130, 

*  United  States  v.  Burns,  12  Wai-  1883. 

lace,  252,  1870  ;  Cammeyer  v.  New-  5  Pierson   v.    Screw   Co.   3   Story, 

ton,  94  U.  S.  234,  187G  ;  McKeever  v.  402,  1844. 

United  States,  23  Off.  Gaz.  1527, 1879.  6  Kendall  v.  Winsor,  21  Howard, 

3  James  v.  Campbell,  104  U.  S.  356,  326,  1858. 
1881. 


108  LETTERS    PATENT.  [CHAP.  VII. 

1839,    though  that  provision  did  not  literally  exclude  such  a 
case. 

Where  another  than  the  first  inventor,  re-invents  and  con- 
structs a  specimen  of  an  invention,  before  any  patent  is  applied 
for  thereon,  and  does  so  without  any  knowledge  of  the  in- 
ventor, or  of  his  doings,  and  without  the  knowledge  or  con- 
sent of  the  inventor  himself,  he  cannot  invoke  the  rule  stated 
at  the  beginning  of  this  section  ;  because  knowledge  and  con- 
sent of  the  inventor  is  an  express  element  in  the  statute  which 
supports  that  rule.  If,  however,  such  a  re- invention  and  such 
a  construction  occurred  before  July  8,  1870,  the  thing  so 
constructed  is  outside  of  any  patent  afterward  applied  for,  be- 
cause the  Patent  Act  of  1839  can  be  invoked  in  its  behalf,  and 
because  the  corresponding  provision  of  that  act  was  not  limited 
to  cases  where  the  inventor  had  knowledge  and  gave  consent. 
Where  such  a  re-invention  and  construction  occurred  after 
July  8,  1870,  it  is  probable  that  the  specific  thing,  so  con- 
structed, is  taken  out  of  the  operation  of  a  patent  afterward 
applied  for,  by  the  direct  action  of  the  fifth  amendment  to 
^the  Constitution  of  the  United  States.  That  amendment  pro- 
vides that  no  person  shall  be  deprived  of  property  without  due 
process  of  law.  Things  independently  re-invented  and  inno- 
cently made,  before  the  first  inventor  applied  for  a  patent 
thereon,  are  the  lawful  property  of  him  who  thus  made  them. 
To  deprive  him  of  the  right  to  use  and  to  sell  those  things, 
would  be  to  lessen  or  to  destroy  their  value,  and  thus  to  de- 
prive him  of  property  rights.  If  such  an  act  is  ever  done  at 
the  suit  of  the  first  inventor,  after  he  gets  his  patent,  it  will  be 
done  by  virtue  of  that  patent.  Now  a  patent  is  the  creature 
of  a  statute.  No  statute  is  "  due  process  of  law,"  a  and  no 
patent  can  be  "  due  process  of  law"  unless  a  creature  can  be 
greater  than  its  creator  :  unless  a  statute  can  authorize  a  con- 
tract to  accomplish  upon  the  rights  of  third  parties,  a  result 
which  the  statute  itself  is  forbidden  to  accomplish.  If  this 

•  5  Statutes  at  Large,  Ch.  88,  Sec-      247,  1833  ;  Taylor  v.  Porter,  4  Hill 
tion  7,  p.  354.  (N.  Y.)  147,  1843. 

3  Barren   v.   Baltimore,   7  Peters, 


CHAP.  VII.]  LETTERS    PATENT.  109 

reasoning,  and  this  conclusion,  is  correct,  it  will  not  follow 
therefrom,  that  such  a  re-inventor  may  construct  any  specimen 
of  the  invention  after  the  first  inventor  has  obtained  a  patent 
thereon.  To  deprive  a  re-inventor  of  such  a  privilege,  is  not 
to  deprive  him  of  property,  for  no  re-inventor  has  any  prop- 
erty right  in  an  invention  which  he  was  the  second  in  the 
United  States  to  make,  any  more  than  he  would  have,  if  he  had 
learned  of  that  invention  from  a  newspaper  or  from  a  book. 

§  159.  The  rule  stated  at  the  head  of  the  last  section  does 
not  apply  to  any  process  patent.  The  provision  of  18YO,1  and 
Section  4899  of  the  Eevised  Statutes,  treat  only  of  machines 
or  other  patentable  articles,  and  confer  exemption  from  the 
operation  of  patents  upon  nothing  but  specific  things.  Now 
a  process  is  neither  an  article  nor  a  thing.  It  is  a  series  of 
acts.  It  is  therefore  outside  the  language  of  the  law  on  this 
subject.  It  is  also  outside  the  reason  of  that  law.  That  rea- 
son is  as  follows.  Where  another  than  the  first  inventor  of  a 
particular  tangible  thing,  buys  from  the  inventor  a  specimen 
of  that  thing,  or  makes  such  a  specimen  with  his  consent,  or 
.  re-invents  and  makes  such  a  specimen  independently  of  the  first 
inventor,  that  specimen  ought  to  be  exempt  from  any  patent 
afterward  applied  for  by  the  first  inventor  ;  because,  if  it  is 
not  so  exempt,  it  will  become  worthless  in  the  hands  of  one 
who  honestly  expended  of  his  substance  to  procure  it,  and 
who  procured  it  without  violating  any  patent  or  any  law. 
Processes  are  not  subjects  of  these  considerations.  A  process 
cannot  be  purchased.  The  right  to  practise  a  patented  proc- 
ess can  indeed  be  purchased  ;  but  the  right  to  practise  an  un- 
patented  process,  while  it  remains  unpatented,  cannot  be  the 
subject  of  a  sale,  because  that  right  belongs  to  every  one  with- 
out any  purchase.  So  also,  if  an  inventor  of  a  process  con- 
Bents  that  another  person  mayvpractise  that  process,  before  the 
inventor  applies  for  a  patent,  that  fact  furnishes  no  reason 
why  that  person  should  be  allowed  to  practise  that  process, 
against  the  will  of  that  inventor,  after  the  date  of  his  patent. 
To  deprive  such  a  person  of  such  a  privilege,  is  not  to  deprive 

1 16  Statutes  at  Large,  Ch.  230,  Section  37,  p.  203. 


110  LETTERS    PATENT.  [CHAP.  VH. 

him  of  the  use  of  a  thing.  It  is  only  to  deprive  him  of  the 
privilege  of  repeating  a  series  of  acts.  These  considerations 
apply  also  to  cases  where  a  re-inventor  produces  and  practises  a 
process,  after  its  production  by  the  first  inventor,  and  before 
any  application  is  made  for  a  patent  thereon,  and  without  any 
knowledge  of  the  first  inventor  or  his  doings.  Such  a  re-in- 
ventor has  no  more  natural  right  to  practise  that  process  after 
a  patent  is  granted  to  the  first  inventor,  than  any  other  person 
has.  He  has  no  such  right  growing  out  of  the  fact  that  he 
was  a  re-inventor,  because  the  patent  laws  do  not  reward  re-in- 
ventors, and  because  patents  to  first  inventors  are  exclusive 
of  re-inventors,  as  well  as  of  other  persons.  He  has  no  such 
right  growing  out  of  rights  of  property,  because  to  deprive 
him  of  the  privilege  of  repeating  the  process  is  not  to  deprive 
him  of  the  use  of  any  tangible  property,  and  because  he  has 
no  intangible  property  in  the  process  itself. 

The  language  of  the  Patent  Act  of  1839  '  was.  however, 
different  from  that  of  the  Act  of  18  TO,  and  of  the  Revised 
Statutes,  on  the  point  treated  in  this  section.  The  earlier  Act 
contained  a  considerable  clause  which  is  not  in  either  of  the 
others,  and  which  induced  the  Supreme  Court  to  decide  that 
the  earlier  statute  applied  to  patents  for  processes,  as  well  as  to 
patents  for  things.8  The  reasoning  of  Justice  BALDWIN,  in  the 
case,  was  never  convincing  to  the  present  text  writer.  It  was 
spoken  of  by  Justice  STORY  as  "  certainly  general  ;"  8  and 
Judge  WHEELER  has  well  said  that  "it  is  not  probable  that 
McClurg  v.  Kingsland  would  be  followed  beyond  cases  of  its 
class,  upon  the  same  statute."  *  As  far  as  McClurg  v.  Kings- 
land  construed  the  Act  of  1839,  and  applied  that  Act  to  the 
very  case  then  at  bar,  it  is  entitled  to  loyal  respect  and  obedi- 
ence, even  from  those  who  cannot  follow  its  reasoning.  But 
McClurg  v.  Kingsland  is  no  guide  to  the  meaning  of  the 
present  statute  on  the  subject,  because  that  statute  is  substan- 
tially different  from  the  one  construed  in  that  case,  and  be- 

1  5  Statutes  at  Large,  Ch.  88,  Sec-  8  Pierson  v.  Screw  Co.  3  Story, 

tion  7,  p.  354.  408,  1844. 

4  McClurg  v.  Kingsland,  1  Howard,  4  Brickill  v.  New  York,  5  Bann.  & 

202,  1843.  Ard.  547,  1880. 


CHAP.  VII.]  LETTERS   PATENT.  Ill 

cause  the  reasoning  of  that  case  has  no  convincing  force  when 
applied  to  the  language  of  the  now  existing  statute. 

§  160.  Every  United  States  patent  is  in  general  co-exten- 
sive, in  point  of  the  territory  it  covers,  with  the  territory  cov- 
ered by  the  jurisdiction  of  the  United  States.1  Every  such 
patent,  therefore,  covers  the  use  of  the  patented  thing  in  or 
under  the  tide  waters  of  the  United  States  ;  and  that,  too, 
even  in  cases  where  the  government  has  granted  to  others  than 
the  patentee,  the  exclusive  right  to  do,  at  a  particular  place, 
the  particular  thing  which  the  patented  invention  is  adapted 
to  accomplish.4  In  the  case  just  cited  the  complainant  had  a 
patent  on  a  certain  submarine  telegraph  cable  ;  and  the  de- 
fendant had  a  grant  from  Congress,  giving  it  the  sole  right, 
for  fourteen  years,  to  lay,  construct,  laud,  maintain  and 
operate,  telegraphic  cables  in  and  over  the  waters,  reefs, 
islands,  shores  and  lands,  over  which  the  United  States  have 
jurisdiction,  from  the  shores  of  Florida  to  the  island  of  Cuba. 
Under  these  circumstances  Justice  BLATCHFORD  decided  that 
the  defendant  acquired  by  its  grant,  no  right  to  use  the 
patented  cables  of  the  complainant ;  and  he  intimated  that  the 
complainant  acquired  by  his  patent  no  right  to  use  his  cables 
between  Florida  and  Cuba.  His  Honor  supported  this  inti- 
mation by  saying  that  no  patent  confers  upon  its  owner  any 
right  to  make  or  use  his  invention  in  the  house  of  another  ; 
and  he  supported  his  decision  by  saying  that  the  fact  just 
mentioned  does  not  confer  upon  another  than  the  patentee 
any  right  to  make  or  use  the  invention  of  the  latter  in  the 
house  of  the  former. 

§  161.  No  United  States  patent  right  extends  to  the  mere 
use  of  the  patented  invention  on  any  foreign  ship,  while  tem- 
porarily in  a  harbor  of  the  United  States  for  the  purposes  of 
commerce  ;  though  such  a  right  would  be  infringed  by  mak- 
ing or  selling  the  patented  article  on  board  any  foreign  vessel 
while  in  either  of  our  ports.3  United  States  patent  rights  ex- 
tend to  the  decks  of  United  States  ships,  even  when  those 

1  Revised  Statutes,  Section  4884.  3  Brown  v.  Duchesne,  19  Howard 

8  Colgate  v.  Ocean  Telegraph  Co.       196,  1856. 
17  BJafch.  310,  1879. 


112  LETTERS    PATENT.  [CHAP.  VII. 

ships  are  on  the  high  seas,  as  fully  as  they  extend  to  the  solid 
earth  of  the  United  States. ' 

§  162.  The  regular  duration  of  a  United  States  patent  for  a 
process,  machine,  manufacture,  or  composition  of  matter,  was 
fourteen  years,  under  the  statutes  prior  to  that  of  1861 ;  but  it 
was  enacted  in  Section  16  of  the  Patent  Act  of  March  2  of 
that  year,  that  all  patents  thereafter  granted  should  remain  in 
force  for  seventeen  years  from  the  date  of  issue.2  Section  22 
of  the  Consolidated  Patent  Act  of  1870  provided  that  every 
patent  should  grant  to  the  patentee,  his  heirs  or  assigns,  for 
the  term  of  seventeen  years,  the  exclusive  right  to  make  use 
and  vend  the  invention  covered  thereby.3  Section  4884  of 
the  Revised  Statutes  makes  the  same  provision,  as  that  made 
on  this  point  by  the  Act  of  1870.  The  phrase  "  every  pat- 
ent'' is  not  to  be  understood  in  its  literal  signification.  It 
means  every  patent,  the  duration  of  which  is  not  otherwise 
prescribed  by  statute.  In  the  latter  category,  design  patents 
fall.  Such  patents  are  grantable  for  fourteen  years  ;  or  for 
seven  years  ;  or  for  three  years  and  six  months,  as  the  appli- 
cant may  in  his  application  elect.4  In  the  same  category, 
also,  fall  patents  for  inventions  for  which  their  owners  pre- 
viously obtained  one  or  more  foreign  patents.  United  States 
patents  of  this  class  cannot  be  granted  for  more  than  seven- 
teen years,  and  they  generally  have  to  be  limited  to  some 
shorter  length  of  time. 

§  163.  "  Every  patent  granted  for  an  invention  which  has 
previously  been  patented  in  a  foreign  country,  shall  be  so  lim- 
ited as  to  expire  at  the  same  time  with  the  foreign  patent,  or, 
if  there  be  more  than  one,  at  the  same  time  with  the  one  hav- 
ing the  shortest  term,  and  in  no  case  shall  it  be  in  force  more 
than  seventeen  years."  "  Such  is  the  present  statute  on  this 
subject,  and  the  corresponding  provision  of  the  Patent  Act  of 
1870  was  substantially  the  same.'  These  enactments  apply 

1  Gardiner  v.  Howe,  2  Clif.  464,  Section  22,  p.  201. 
1865.  «  Revised  Statutes,  Section  4931. 

» 12    Statutes    at  Large,    Ch.   88,          »  Revised  Statutes,  Section  4887. 
Section  16,  p.  249.  «  16  Statutes  at  Large,  Ch.   230, 

»  16  Statutes  at  Large,    Ch.  230,  Section  25,  p.  201. 


CHAP.   VII.]  LETTERS    PATENT.  113 

only  to  cases  wherein  the  foreign  patent  was  taken  out  bj  the 
United  States  patentee,  or  at  least  with  his  knowledge  and 
consent.  No  foreign  patent  obtained  by  another,  without 
that  knowledge  and  that  consent,  after  the  inventor  made  his 
invention,  and  before  the  United  States  patent  was  granted, 
can  operate  to  limit  the  duration  of  the  latter.1  "Whether 
these  enactments  apply  to  all  cases  where  a  foreign  patent  was 
granted  before  the  granting  of  the  United  States  patent ; 
or  apply  only  to  cases  where  a  foreign  patent  was  published 
before  the  granting  of  the  United  States  patent,  is  a  question 
of  some  difficulty,  and  one  which  is  as  yet  unsettled.  The 
weight  of  reason  seems  to  be  in  favor  of  the  first  hypothesis. 
"Whether  these  enactments  apply  to  cases  where  the  United 
States  patent  was  granted  after  the  foreign  patent,  but  upon 
an  application  filed  before  that  event,  is  a  question  which  was 
decided  in  the  negative  by  the  Commissioner  of  Patents  ; 2 
and  in  the  affirmative  by  Judge  NIXON.  3  The  Commissioner 
was  clearly  wrong,  and  the  judge  was  clearly  right  in  the  mat- 
ter. 

In  cases  to  which  these  enactments  apply,  the  United  States 
patent  will  expire  with  the  first  term  of  the  foreign  patent. 
No  extension  of  such  foreign  patent  can  have  any  effect  upon 
the  duration  of  the  United  States  patent ;  whether  that  exten- 
sion is  a  matter  of  grace,  as  in  England,  and  was  granted  after 
the  expiration  of  the  first  term,4  or  whether  it  is  a  matter  of 
right,  as  in  Canada,  and  was  granted  before  the  expiration  of 
the  first  term.5 

The  law  set  forth  in  this  section  applies  to  no  patent  which 
was  originally  granted  prior  to  July  8,  1SYO  ;  and  applies  to 
no  reissue  of  any  patent  which  was  originally  granted  before 
that  date,  even  though  the  reissue  itself  was  granted  after  that 
date.' 

1  Kendrick  v.  Emmons,  2  Bann.  Ard.  501,  1878. 

&  Ard.  210,  1875.  *  Keissneru.  Sharp,  16Blatch.  393, 

4  Ex  parts  Mann,  17  Off.  Gaz.  330,  1879. 

1880.  «  Badische  Anilin  and  Soda  Fabrik 

3  Bate  Eefrigerating  Co.  v.  Gillett,  v.  Hamilton.  Mfg.  Co.  3  Bann.  &  Ard. 
13  Fed.  Hep.  553,  1882.  235,  1878.. 

4  Henry  v.   Tool  Co.    3   Bann.   & 


114:  LETTERS    PATENT.  [CHAP.  VII. 

It  is  not  necessary  that  tlie  United  States  patent  shall  be  so 
limited  on  its  face,  as  to  appear  to  expire  at  the  same  time  with 
the  shortest  foreign  patent.  Whether  it  is  so  limited  or  not, 
the  courts  will  decline  to  enforce  it  after  the  expiration  of  the 
foreign  patent.1  In  this  way  the  statute  is  satisfied.  In  this 
way  the  United  States  patent  is  so  limited  as  to  expire  at  the 
same  time  with  the  foreign  patent.  Substantially  this  doc- 
trine was  also  held  by  the  Supreme  Court,*  in  construing  an 
earlier  statute  on  the  same  subject  :  a  statute  which  it  is  now 
in  order  to  explain. 

§  164.  Section  8  of  the  Patent  Act  of  1836,  provided  that 
nothing  therein  contained  should  be  construed  to  deprive  any 
original  and  true  inventor  of  the  right  to  a  patent  for  his  in- 
vention, by  reason  of  his  having  previously  taken  out  letters 
patent  therefor  in  a  foreign  country,  and  the  same  having 
been  published,  at  any  time  within  six  months  next  preceding 
the  filing  of  his  specification  and  drawings.3  Section  6  of  the 
Patent  Act  of  1839  provided  that  no  person  should  be  de- 
bared  from  receiving  a  patent  for  any  invention,  as  provided 
in  the  Act  of  1836,  by  reason  of  the  same  having  been  pat- 
ented in  a  foreign  country  more  than  six  months  prior  to  his 
application,  provided,  among  other  things,  that  every  such 
patent  should  be  limited  to  the  term  of  fourteen  years  from  the 
date  or  publication  of  such  foreign  letters  patent.4  The 
effect  of  these  enactments  was  to  allow  an  inventor  to  take  out 
a  patent  in  the  United  States,  for  an  invention  which  he  had 
previously  patented  in  a  foreign  country,  no  matter  how  long 
previously  that  foreign  patent  was  granted  ;  *  but  the  duration 
of  the  United  States  patent  was  limited  to  the  term  of  four- 
teen years  from  the  date  or  publication  of  the  foreign  patent, 
unless  the  United  States  patent  was  applied  for  within  six 
months  after  the  foreign  patent  was  taken  out,  and  within  six 
months  after  the  foreign  patent  was  published.  This  law  ap- 

1  New  American  File  Co.  v.  Nich-      Section  8,  p.  121. 
olson  File  Co.  8  Fed.  Eep.  816, 1881.          «  5  Statutes  at  Large,  Ch.  88,  Seo- 

*  O'Keilly   v.  Morse,  15  Howard,      tion  6,  p.  354. 

<62,  1853.  •  De  Florez  v.  Eaynolds,  17  Blatch. 

*  5   Statutes    at  Large,   Ch.   357,      444,  1880. 


CHAP.  Vn.]  LETTERS    PATENT.  115 

plied  only  to  cases  where  the  foreign  patent  was  published  be- 
fore the  United  States  patent  was  applied  for. '  It  did  not, 
therefore,  affect  any  United  States  patent  for  an  invention 
which  was  patented  in  a  foreign  country  while  the  application 
for  the  United  States  patent  was  pending  in  the  Patent  Office. 
It  was  not  necessary  under  the  law  stated  in  this  section,  any 
more  than  it  is  necessary  under  the  law  stated  in  the  last,  that 
a  patent  should  be  limited  on  its  face,  so  as  to  appear  to  expire 
when  it  really  ceased  to  be  in  force.  Whether  so  limited  or 
not,  the  courts  would  limit  it  to  its  legal  life,  when  called  upon 
to  enforce  it  after  the  end  of  that  life  ;  but  its  validity  for  the 
term  of  fourteen  years  from  the  date  of  the  foreign  patent, 
was  unaffected  by  the  fact  that  on  its  face  the  United  States 
patent  purported  to  run  for  fourteen  years  from  its  own  date.8 

§  165.  Section  16  of  the  Patent  Act  of  March  2,  1861, 
provided  that  all  patents  thereafter  granted  should  remain  in. 
force  for  the  term  of  seventeen  years  from  the  date  of  issue  ; 
and  Section  17  of  the  same  act  repealed  all  prior  inconsistent 
acts  and  parts  of  acts.3  It  is  an  important  and  an  unsettled 
question  whether  these  provisions  modified  the  law  set  forth 
in  the  last  section  ;  and  if  so,  to  what  extent.  The  question  is 
important,  because  it  applies  to  all  United  States  patents  which 
were  granted  between  March  2,  1861,  and  July  ,8,  1870, 
for  inventions  previously  patented  in  a  foreign  country,  with 
the  knowledge  and  consent  of  the  United  States  patentee. 
The  question  is  unsettled  because  neither  of  the  Circuit  Courts 
which  have  considered  it,  had  occasion  to  consider  it  in  all  its 
aspects,  and  because  as  far  as  they  did  consider  it,  they  did  not 
agree. 

§  166.  There  are  three  opinions  relevant  to  the  question 
stated  in  the  last  section. 

The  first  opinion  is  that  the  statute  of  1861  did  not  repeal 
nor  modify  the  former  law  on  this  subject.  Those  who  hold 
this  view,  support  it  by  arguing  that  when  properly  construed, 


1  French  v.  Rogers,  1  Fisher,  136.      62,  1853. 

1851.  312    Statutes    at  Large,   Ch.   88, 

s  O'Reilly  v.  Morse,  15   Howard,       Sections  16,  17,  p.  249. 


116  LETTERS    PATENT.  [CHAP.  VII. 

the  Act  of  1861  is  entirely  consistent  with  that  of  1839.  They 
say  that  the  phrase  "  all  patents"  in  the  Act  of  1861,  cannot 
be  construed  literally  ;  for  if  it  could,  it  would  include  reissue 
patents,  and  patents  for  designs.  That  being  the  case,  they 
say  that  the  statute  should  be  construed  to  mean  :  All  pat- 
ents hereafter  granted,  the  duration  of  which  is  not  specially 
prescribed  by  statute,  shall  remain  in  force  for  the  term  of 
seventeen  years  from  the  date  of  issue.  Those  who  hold  this 
view  support  it  still  further  by  an  argument  drawn  from  the 
policy  of  the  law.  They  say  that  the  reason  of  the  law  of 
1839  was  the  same  as  that  which  dictated  the  law  of  1870  : 
namely  an  opinion  that  inventions  ought  not  to  be  the  sub- 
jects of  monopolies  in  the  United  States,  after  they  become 
free  to  other  nations.  They  suppose  that  in  1839  Congress 
took  it  for  granted,  that  whenever  other  foreign  countries 
should  adopt  a  patent  system,  they  would  follow  the  example 
of  England  and  of  the  United  States,  and  make  the  duration 
of  their  patents  fourteen  years.  As  long  as  that  continued  to 
be  the  case,  the  provision  of  the  Act  of  1839,  that  a  United 
States  patent,  for  an  invention  previously  patented  in  a  foreign 
country,  should  be  limited  to  the  term  of  fourteen  years  from 
the  date  of  the  foreign  patent,  had  the  same  effect  that  would 
have  followed  from  the  provision  of  1870,  had  the  latter  been 
the  law  at  that  time.  But  when  foreign  countries,  like  Aus- 
tria and  Prussia,  provided  themselves  with  patent  laws, 
they  provided  for  shorter  terms  than  fourteen  years,  and  ac- 
cordingly the 'United  States  in  1870  altered  its  law  on  the 
subject,  so  as  to  make  United  States  patents  for  inventions  pre- 
viously patented  in  foreign  countries  to  expire  at  the  same 
time  with  the  shortest  foreign  patent.  In  the  light  of  these 
circumstances,  those  who  hold  this  first  opinion  believe  that  a 
statute  of  such  long  standing  as  that  of  183&,  and  founded  on 
such  a  well-known  point  of  public  policy,  ought  not  to  be  held 
to  be  repealed  by  an  argument,  which,  if  valid,  would  not  only 
have  that  effect,  but  would  also  have  authorized  or  compelled 
the  granting  of  seventeen -year  patents  for  designs.  They  be- 
lieve also,  that  no  convincing  argument  can  be  made  in  favor 
of  the  hypothesis  of  modification,  any  more  than  in  favor  of 


CHAP.  VII.]  LETTERS    PATENT.  117 

the  hypothesis  of  repeal  of  the  provision  in  the  Act  of  1839, 
by  the  passage  of  the  Act  of  1861. 

§  167.  The  second  opinion  is,  that  the  statute  of  1861  mod- 
ified that  of  1839  precisely  as  it  would  have  done,  had  it  ex- 
pressly substituted  the  word  "  seventeen"  for  the  word 
"fourteen"  in  the  earlier  statute;  thus  making  it  read: 
"  every  such  patent  shall  be  limited  to  the  term  of  seventeen 
years  from  the  date  or  publication  of  such  letters  patent." 
This  was  the  opinion  of  Judge  NATHANIEL  SHIPMAN  in  1876.' 
In  support  of  it  his  Honor  said  :  "  In  my  opinion,  the  16th 
and  17th  sections  of  the  Act  of  March  2d,  1861,  (12  U.  S. 
Stat.  at  La/rge,  249,)  were  intended  to  change  all  pre-existing 
statutory  provisions  by  which  American  patents  were  limited 
to  fourteen  years,  and  to  provide  thereafter  a  term  of  seven- 
teen years,  without  extension.  This  being  the  intent  of  the 
Legislature,  the  proviso  of  the  6th  section  of  the  Act  of 
March  3d,  1839,  (5  Id.,  354,)  that,  where  a  foreign  patent  had 
been  granted  to  the  patentee,  prior  to  his  American  patent, 
the  latter  patent  should  be  limited  to  the  term  of  fourteen 
years  from  the  date  of  such  foreign  letters  patent,  was,  by  the 
operation  of  the  16th  section  of  the  Act  of  1861,  necessarily 
amended,  so  that  American  patents  subsequently  issued  and 
embraced  within  such  proviso  should  extend  for  the  new  term 
of  seventeen  years  from  the  date  of  the  foreign  patent. 
"  The  proviso  was  not  based  upon  the  idea  that  American 
patents  should  expire  at  the  same  time  with  the  foreign  patent. 
It  is  true,  that,  when  an  English  patent  had  been  taken  out, 
such  would  be  the  practical  result,  but  it  would  not  be  the  re- 
sult when  a  patent  had  been  granted  by  the  government  of  a 
foreign  nation  whose  laws  provided  a  term  of  five,  ten,  or  fif- 
teen years.  The  intent  of  the  6th  section  of  the  Act  of  1839 
was,  that,  in  case  a  foreign  patent  had  been  issued,  while  the 
American  patent  was  to  be  issued  for  the  term  of  fourteen 
years,  (which  had  been  previously  provided  as  the  duration  of 
the  life  of  all  American  patents,  subject  to  extension,)  the 
American  patent  should  be  considered,  for  the  purposes  of  the 

1  Western  v.  White,  13  Blatch.  364,  1876. 


118  LETTERS   PATENT.  [CHAP.  VH. 

duration  of  the  term,  as  antedated  to  the  commencement  of  the 
term  of  the  foreign  patent.  The  act  of  1861  made  no  altera- 
tion in  this  general  system  of  legislation,  but,  having  altered 
the  term  of  American  patents  to  seventeen  years,  and  having 
provided  for  a  repeal  of  all  laws  inconsistent  therewith,  the 
Cth  section  of  the  act  of  1839  was  changed  accordingly,  by 
force  of  the  new  provision  of  the  statute  of  1861.  The  act  of , 
July  8th,  1870,  (16  U.  S.  Stat.  at  Large,  198,)  introduced  a 
new  principle,  and  provided  that  the  American  patent  should 
expire  at  the  same  time  with  the  foreign  patent,  but  should 
not  exceed  a  term  of  seventeen  years.  The  plaintiff's  patent 
will  not,  therefore,  expire  until  October  22d,  1876." 

§  168.  The  third  opinion  is  that  the  statute  of  1861  repealed 
the  whole  prior  law  on  this  subject,  and  provided  that  United 
States  patents  should  run  seventeen  years  from  their  respec- 
tive dates,  whether  the  invention  covered  thereby  had  pre- 
viously been  patented  in  a  foreign  country  or  not.  This  was 
the  opinion  of  Justice  CLIFFORD  in  1878. '  His  Honor,  how- 
ever, omitted  to  support  his  opinion  by  reasoning  ;  and  neither 
of  the  two  precedents  he  cited  to  support  it,  appears,  when 
closely  examined,  to  bear  upon  the  precise  point. 

§  169.  Justice  BLATCHFORD  reviewed  the  question  which  is 
discussed  in  the  last  four  sections,  in  a  decision  which  he  ren- 
dered in  1880."  With  the  highest  regard  expressed  for  the 
judgment  of  Justice  CLIFFORD,  he,  with  Judge  WHEELER'S 
concurrence,  decided  that  the  third  opinion  was  not  correct. 
Their  Honors  did  not  decide  whether  the  true  view  is  the  first 
opinion,  or  the  second  opinion  heretofore  explained.  Accord- 
ing to  either  of  those  theories,  the  patent  at  bar  had  expired, 
and  in  either  event,  therefore,  the  injunction  which  had  been 
granted  in  ignorance  of  the  foreign  patent,  had  to  be  vacated, 
and  was  accordingly  discharged.  The  Court,  however,  clearly 
indicated  a  leaning  in  favor  of  the  second  opinion,  as  against 
the  first,  and  accordingly  Judge  WHEELER  in  a  later  case s 

1  Gofif  v.  Stafford,  3  Bann.  <fe  Ard.       442,  1880. 

610,  1878.  »  Nathan  v.  Elevated  Bailroad  Co. 

*  De  Florez  v.  Reynolds,  17  Blatch.       5  Bann.  &  Ard.  280,  1880. 


CHAP.   VII.]  LETTERS   PATENT.  119 

issued  an  injunction  to  continue  in  force  till  the  expiration  of 
seventeen  years  from  the  date  of  the  foreign  patent.  His 
Honor  however  remarked  that  the  question  had  not  been  dis- 
cussed by  counsel,  and  that  he  did  not  mean  to  conclude  any 
question  that  might  thereafter  be  raised  relevant  to  the  point. 
So  also  Judge  BUTLER,  in  a  still  later  case,1  decided  that  the 
third  opinion  is  not  correct.  He  had  no  occasion  to  decide 
between  the  first  and  the  second  view,  and  indeed  the  first  view 
does  not  seem  to  have  been  called  to  his  attention.  As  far 
however  as  he  had  reflected  upon  the  subject,  he  appears  to 
have  favored  the  second  view. 

The  conclusion  of  the  whole  matter  appears  therefore  to  be, 
that  the  third  opinion  is  not  correct,  and  that  as  between 
the  first  opinion  and  the  second,  one  decision  and  three 
obiter  dicta  may  be  cited  in  favor  of  the  second,  and 
that  nothing  can  be  said  in  favor  of  the  first,  except  what 
is  said  by  way  of  suggested  argument  in  Section  166  in 
this  chapter,  and  except  what  may  occur  to  counsel  learned  in 
the  law. 

§  170.  The  terms  of  all  United  States  patents  begin  at  their 
respective  dates.  Those  dates  are  selected  by  the  Commis- 
sioner of  Patents,  but  they  cannot  be  later  than  six  months 
after  the  time  at  which  the  respective  applications  are 
allowed  ; a  and  cannot  be  earlier  than  the  time  of  such  allow- 
ance :  that  is  to  say,  patents  cannot  now  be  antedated.3 

Section  8  of  the  Patent  Act  of  1836  provided  that  whenever 
the  applicant  should  request  it,  the  patent  should  take  date 
from  the  time  of  the  filing  of  the  specification  and  drawings, 
not  however  exceeding  six  months  prior  to  the  actual  issuing 
of  the  patent.4  This  continued  to  be  the  law  for  nearly  a 
quarter  of  a  century,  and  patents  so  antedated  conferred  rights 
of  action  upon  the  patentees,  for  infringements  occurring- 
after  their  respective  dates,  and  before  the  respective  days  of 


1  Siemens  v.  Sellers,  23  Off.  Gaz.  444,  1880. 

2234,  1883.  4  5    statutes    at    Large,  Ch.  357, 

2  Revised  Statutes,  Section  4885.  Section  8,  p.  121. 
1  De  Florez  v.  Eaynolds,  17  Blatch. 


120  LETTERS  PATENT.  [CHAP.  VII. 

their  actual  issue.1  Section  16  of  the  Patent  Act  of  March 
2,  1861,  provided  a  change  in  this  law  :  provided  that  there- 
after the  term  of  patents  should  begin  with  the  dates  of  their 
respective  issue,  and  such  has  ever  since  been  the  law  on  the 
subject.*  In  actual  practice,  patents  are  now  generally  dated 
and  issued  on  the  third  Tuesday  after  the  applicant  pays  the 
final  Patent  Office  fee. 

§  171.  The  grantee  of  the  government  in  cases  of  letters 
patent  for  inventions  may  be  the  inventor  himself  ; 3  or  his 
assignee  ; 4  or  if  an  inventor  dies  before  any  patent  is  granted 
for  his  invention,  the  right  to  obtain  the  patent  devolves  on 
his  executor  or  administrator,  in  trust  for  the  heirs  at  law  of 
the  deceased,  in  case  he  shall  have  died  intestate  ;  or  if  he  shall 
have  left  a  will,  disposing  of  the  invention,  then  in  trust  for 
his  devisees.5  In  this  last  case  the  patent  may  be  granted  to 
the  executor  by  his  proper  personal  name,  without  any  decla- 
ration that  he  takes  in  his  representative  capacity  ; c  and  the 
same  thing  is  equally  true  in  cases  where  the  patent  is  granted 
to  an  administrator.  Where  an  inventor  assigns  his  invention 
before  making  an  application  for  a  patent,  and  then  makes 
such  an  application,  coupled  with  a  request  that  the  patent  be 
granted  to  the  assignee,  and  accompanied  with  an  entry  of  the 
assignment  on  the  records  of  the  Patent  Office,  and  then  dies 
before  any  patent  is  granted  ;  there  appears  to  be  no  reason 
why  the  patent  should  not  be  granted  to  the  assignee,  though 
the  statute  literally  provides  that  in  all  cases  where  the  invent- 
or dies  before  the  patent  is  granted,  the  right  to  the  patent 
devolves  on  his  executor  or  administrator  in  trust  for  his  heirs 
or  devisees.7  But  this  statute  must  receive  a  reasonable  con- 
struction, and  it  is  not  reasonable  to  hold  that  the  death  of  an 
inventor,  who  has  sold  and  assigned  his  inchoate  righttoapat- 
'ent,  should  operate  to  divest  his  assignee  of  that  right,  and 

1  Burdett  v.   Estey,  3  Fed.  Rep.  5  Revised  Statutes.  Section  4896. 

566,  1880.  « Stimpson  v.   Rogers,    4  Blatch. 

s  12    Statutes  at  Large,    Ch.   88,  336, 1859  ;  Northwestern  Fire  Extin- 

Section  16,  p.  249.  guisher  Co.    v.  Philadelphia  Extin- 

3  Revised  Statutes,  Section  4886.  guisher  Co.,  1  Bann.  <fc  Ard.  177, 1874. 

4  Revised  Statutes,  Section  4895.  '  Revised  Statutes,  Section  4896. 


CHAP.   VII.]  LETTERS    PATENT.  121 

devolve  it  upon  another  person,  in  trust  for  still  another  party. 
Nor  is  there  any  propriety,  in  such  a  case,  in  granting  the 
patent  to  the  executor  or  administrator,  on  the  theory  that  he 
will  take  as  trustee  for  the  assignee.  The  assignee  requires  no 
trustee,  for  his  inchoate  title,  is  a  legal,  and  not  a  merely 
equitable  one  ; '  and  the  executor  or  administrator,  if  he 
takes  at  all,  must  take  as  trustee  for  the  heirs  or  devisees  of 
the  inventor.  Where  an  inventor  assigns  his  invention  and 
dies  before  making  any  application  for  a  patent,  a  difficulty 
arises  for  which  the  statute  affords  no  clear  solution.  In  such 
a  case,  it  is  provided  that  the  application  must  be  made  and 
sworn  to  by  the  executor  or  administrator,  for  an  assignee  can- 
not apply  for  a  patent  except  on  the  oath  of  the  inventor 
himself."  It  is  also  provided,  that  where  an  executor  or  ad- 
ministrator applies  for  a  patent,  he  must  take  that  patent,  if 
granted,  in  trust  for  the  heirs  or  devisees  of  the  inventor.* 
Now  under  these  circumstances  the  law  must  do  one  of  three 
things.  It  must  ignore  this  last  provision,  and  hold  that  the 
executor  or  administrator  takes  in  trust  for  the  assignee  ;  or  it 
must  impose  a  trust  upon  a  trust,  by  holding  that  the  executor 
or  administrator  takes  in  trust  for  the  heirs  or  devisees,  and 
they  take  in  trust  for  the  assignee  ;  or  it  must  deprive  the  as- 
signee of  his  right  altogether.  The  first  alternative  flies  in 
the  face  of  the  statute,  and  the  third  flies  in  the  face  of  jus- 
tice. The  second  is  consistent  with  conscience,  and  can  prob- 
ably be  adopted  and  enforced  by  courts  of  equity. 

§  172.  Letters  patent  are  documents  consisting  of  the  grant, 
and  the  specification  ;  and  where  drawings  form  a  part  of  the 
application,  they  also  form  a  part  of  the  letters  patent.  The 
grant  is  a  paper,  issued  in  the  name  of  the  United  States, 
under  the  seal  of  the  Patent  Office,  and  signed  by  the  Secre- 
tary of  the  Interior,  and  countersigned  by  the  Commissioner 
of  Patents.  It  contains  a  short  title  of  the  invention,  and 
purports  to  grant  to  the  patentee,  his  heirs  or  assigns,  for  the 


1  Hendrie  v.  Sayles,  98  U.  S.  549,      4896. 

1878.  a  Eevised  Statutes,  Section  4896. 

2  Revised  Statutes,  Sections  4895, 


122  LETTERS   PATENT.  [CHAP.  VH. 

term  of  seventeen  years,  the  exclusive  right  to  make,  use,  and 
vend  the  invention,  throughout  the  United  States  and  the  ter- 
ritories thereof  ;  and  it  refers  to  the  specification,  for  the  par- 
ticulars of  the  invention  covered  by  the  grant.1  Letters  pat- 
ent are  valid  where  the  grant  is  signed  by  an  Acting  Secre- 
tary of  the  Interior,  or  countersigned  by  an  Acting  Commis- 
sioner of  Patents  ;  and  letters  patent,  so  signed,  are  admissible 
in  evidence  without  any  pleading  or  proof  of  the  title  of  such" 
officers  to  their  respective  offices.  Courts  take  judicial  notice 
of  the  persons  "who  preside  over  the  departments  or  bureaus  of 
the  government,  whether  permanently  or  temporarily  ;  and  the 
production  of  their  commissions  is  not  necessary  to  support 
their  official  acts.2  But  if  letters  patent  are  issued  without 
any  signature  of  the  Secretary  of  the  Interior,  or  of  an  Acting 
Secretary  of  the  Interior,  the  omission  is  fatal  to  the  validity 
of  those  letters  patent ; 3  and  the  same  effect  would  undoubt- 
edly result  from  an  omission  of  the  countersignature  of  the 
Commissioner  of  Patents,  unless  an  Acting  Commissioner  of 
Patents  should  countersign  in  his  stead.  But  a  misnomer  of 
the  patentee  in  a  grant,  does  not  invalidate  the  patent,  if  he 
can  be  identified  by  means  of  any  description  which  the  letters 
patent  may  contain.*  If  the  letters  patent  contain  no  means 
for  correcting  the  misnomer,  it  may  be  corrected  by  the 
proper  officers  of  the  government,  whenever  those  officers  be- 
come convinced  of  the  mistake.* 

§  173.  The  word  "  specification,"  whenever  it  is  used  in  the 
statute  without  the  word  "claim,"  covers  both  the  claim  and 
the  description  ;  and  whenever  it  is  used  with  the  word  claim, 
it  covers  the  description  only.'  The  first  is  its  more  general 
meaning,  and  to  avoid  confusion  it  is  never  used  in  any  other 
sense  in  this  book.  The  proper  characteristics  of  specifica- 

1  Revised  Statutes,  Sections  4883,  «  Northwestern  Fire  Extinguisher 

4884.  Co.    v.    Philadelphia     Extinguisher 

8  York  and  Maryland  Line  Rail-  Co.,  1  Bann.  &  Aid.  177,  1874. 

road  Co.  v.  Winans,  17  Howard,  30,  8  Bell  v.  Hearne,  19  Howard,  262, 

1854.  -1856. 

3  Marsh  v.  Nichols,  15  Fed.  Rep.  c  Wilson  v.  Coon,  18  Blatch.  532, 

914,  1883.  1880. 


CHAP.  VII.]  LETTERS    PATENT.  123 

tions  are  herein  explained  by  explaining  the  proper  charac- 
teristics of  descriptions  and  claims,  which  are  the  component 
parts  of  specifications. 

§  174.  The  description  of  the  invention,  which  forms  a  part 
of  every  specification,  is  required  to  set  forth  that  invention, 
and  the  manner  and  process  of  making  and  using  it,  in  such 
full,  clear,  concise,  and  exact  terms  as  to  enable  any  person 
skilled  in  the  art  or  science  to  which  it  appertains,  or  with 
which  it  is  most  nearly  connected,  to  make  and  use  the  same  ; 
and  in  case  of  a  machine  the  description  is  required  to  explain 
the  principle  thereof,  and  the  mode  of  applying  that  principle 
which  the  inventor  believes  to  be  the  best.1  It  is  not  neces- 
sary that  the  description  should  be  intelligible  to  every  intelli- 
gent man,  nor  to  every  skilled  mechanic.  If  it  can  be  under- 
stood by  those  who  possess  full  knowledge  of  the  prior  inven- 
tions in  the  same  department  of 'art  or  science,  it  is  full,  clear, 
concise  and  exact  enough  to  comply  with  the  statute.*  In  ex- 
plaining this  point  of  law,  Justice  BRADLEY,  in  the  decision 
just  cited,  used  a  particularly  felicitous  illustration.  His 
Honor  said  :  "  When  an  astronomer  reports  that  a  comet  is  to 
be  seen  with  the  telescope  in  the  constellation  of  Auriga,  in  so 
many  degrees  of  declination,  and  so  many  hours  and  minutes 
of  right  ascension,  it  is  all  Greek  to  the  unskilled  in  science  ; 
but  other  astronomers  will  instantly  direct  their  telescopes  to 
the  very  point  in  the  heavens  where  the  stranger  has  made  his 
entrance  into  our  system.  They  understand  the  language  of 
their  brother  scientist.  If  a  mechanical  engineer  invents  an 
improvement  on  any  of  the  appendages  of  a  steam-engine, 
such  as  the  valve-gear,  the  condenser,  the  steam-chest,  the 
walking-beam,  the  parallel  motion,  or  what  not,  he  is  not 
obliged,  in  order  to  make  himself  understood,  to  describe  the 
engine,  nor  the  particular  appendage  to  which  the  improve- 
ment refers,  nor  its  mode  of  connection  with  the  principal 
machine.  These  are  already  familiar  to  others  skilled  in  that 
kind  of  machinery.  He  may  begin  at  the  point  where  his  in- 

1  Bevised  Statutes,  Section  4888. 

*  Loom  Co.  v.  Higgins,  105  U.  S.  580,  1881. 


124:  LETTERS    PATENT.  [CHAP.  VTI. 

vention  begins,  and  describe  what  lie  has  made  that  is  new,  and 
what  it  replaces  of  the  old." 

These  observations  are  particularly  applicable  to  descriptions 
of  machinery  ;  but  they  also  suggest  the  true  piinciples  on 
which  to  judge  of  the  sufficiency  of  descriptions  of  processes, 
manufactures  and  compositions  of  matter.  Relevant  to  this 
last  class  of  subjects  of  patents,  it  has  been  held  that  descrip- 
tions should  state  the  component  parts  thereof,  and  the  pro- 
portions in  which  they  are  to  be  mixed  or  combined,  and 
should  do  this  with  clearness  and  precision,  and  should 
not  leave  the  public  to  ascertain  any  such  fact  by  experi- 
ment.1 

§  175.  An  inventor  need  not  explain  in  his  description,  or 
know  in  point  of  fact,  what  laws  of  nature  those  are,  which 
cause  his  invention  to  work.8  Neither  is  any  description  in- 
sufficient, in  the  eye  of  the  law,  on  account  of  any  mere  errors 
it  may  be  found  to  contain  ;  provided  those  errors  would  at 
once  be  detected,  and  their  remedies  be  known,  by  any  person 
skilled  in  the  art,  when  making  specimens  of  the  invention  set 
forth,  or  when  practising  that  invention  if  that  invention  is 
a  process.3  Nor  need  a  description  state  every  use  to  which 
the  described  and  claimed  invention  is  applicable,  in  order  to 
cover  every  such  use.4  Neither  is  it  necessary  in  a  descrip- 
tion in  a  patent  for  a  process,  to  set  forth  all  the  modes  in 
which  that  process  may  be  performed,  or  all  the  kinds  of  ap- 
paratus which  may  be  used  in  performing  it,  in  order  to  cover 
that  process  with  the  patent.  It  is  enough  to  describe  one 
particular  mode,  and  one  particular  apparatus,  by  means  of 
which  the  process  may  be  performed  with  at  least  some  bene- 
ficial result.6  Nor  is  a  description  fatally  defective  merely 
because  it  omits  to  mention  something  which  contributes  only 
to  the  degree  of  benefit,  provided  the  invention  will  work 

1  Wood  u.  Underbill,  5  Howard,  1,  559,   1860  ;  Kendrick  v.  Emmons,  2 

1847  ;  Tyler  v.  Boston,   7   Wallace,  Bann.  &  Ard.  210,  1875. 

327,  1868.  4  pike    v>   Potter,   3    Fisher,   55, 

8  Saint    Louis    Stamping    Co.    v.  1859. 

Quinby,  4  Bann.  &  Ard.  195,  1879.  *  Tilgbman  v.  Proctor,  102  U.  S. 

8  Singer  v.  Walmsley,   1   Fisber,  728,  1880. 


CHAP.   VII.]  LETTERS    PATENT.  125 

beneficially  without  it ; '  but  the  omission  of  anything  abso- 
lutely material  to  the  utility  of  the  invention  described,  is  a 
fatal  defect  in  a  description  ; "  unless  that  omission  would 
naturally  be  supplied  by  any  person  skilled  in  the  art,  when 
making  the  invention  if  it  be  a  thing,  or  when  using  it  if  it 
be  a  process.  Accordingly  it  has  been  held,  that  where  one 
element  of  a  new  combination  covered  by  a  patent,  must  have 
a  certain  form,  in  order  to  operate  in  that  combination,  and 
where  another  form  of  that  element  is  known  to  persons 
skilled  in  the  art,  a  description  is  insufficient  which  merely 
states  that  such  old  element  is  a  part  of  the  combination,  with- 
out saying  or  showing  which  of  its  known  forms  is  applicable 
to  the  case.3  On  the  other  hand,  no  excess  of  description  is 
injurious  to  the  validity  of  a  patent,  unless  the  redundant  mat- 
ter was  introduced  with  fraudulent  intention.4 

§  176.  The  claim  or  claims  of  a  specification  are  necessarily 
inserted  in  order  to  conform  to  the  statutory  requirement,  that 
the  patentee  shall  particularly  point  out  and  distinctly  claim 
the  part,  improvement,  or  combination,  which  he  claims  as  his 
invention.6  A  claim  covers  and  secures  a  process,  a  machine,  a 
manufacture,  or  a  composition  of  matter,  and  never  the  func- 
tion or  result  of  either.8  A  claim  may  cover  the  entire  proc- 
ess, machine,  manufacture,  or  composition  of  matter,  which  is 
set  forth  in  the  description,  or  it  may  cover  such  parts,  or  such 
sub-processes,  or  such  sub-combinations  as  are  new  and  useful 
inventions  ;  and  the  specification  may  contain  a  claim  for  the 
whole,  and  other  claims  for  separate  parts,  and  still  other 
claims  for  separate  sub-processes  or  sub-combinations.7  But 
in  order  to  be  sustained,  each  claim  must  be  able  to  inde- 
pendently withstand  the  tests  of  invention,  of  novelty,  and 


1  Sewall  v.  Jones,   91  U.  S.  185,  6  Corning  v.  Burden,  15  Howard, 

1875.  252,   1853  ;    O'Keilly   v.    Morse,   15 

4  Carr  v.  Eice,  1  Fisher,  204,  1856.  Howard,  62,  1853  ;  Carver  v.  Hyde, 

3  Schneider  v.  Thill,  5  Bann.   &  16    Peters,  513,  1842  ;    Le  Hoy    v. 
Ard.  565,  1880.  Tatham,  14  Howard,  156,  1852. 

4  Sewell  v.  Jones,   91  U.  S.   186,  '  Kailroad  Co.  v.  Dubois,  12  Wal- 
1875.  lace,  47,  1870. 

6  Revised  Statutes,  Section  4888. 


126  LETTERS    PATENT.  [CHAP.  VII. 

of  utility,  which  are  stated  in  the  second,  third,  and  fourth 
chapters  of  this  book  respectively.  All  claims  are  re- 
quired to  be  specific,  so  that  the  public  may  know  what  they 
are  prohibited  from  doing  during  the  existence  of  the  patent, 
and  what  they  are  to  have  at  the  end  of  the  term  as  a  consid- 
eration for  the  grant.1  The  necessary  degree  of  particularity 
in  claims  may  be  reached  in  various  modes.  "Where  the  in- 
vention is  an  entire  machine,  the  claim  is  sufficient  if  it  is 
clearly  co-extensive  with  the  machine  ;  and  where  the  inven- 
tion is  a  part  of  a  machine  or  manufacture,  that  part  must  be 
clearly  indicated  in  the  claim  which  covers  it."  Claims  for 
combinations  of  a  plurality  of  the  described  devices,  but  less 
than  all  of  them,  should  specify  those  devices  unmistakably, 
and  should  clearly  indicate  that  it  is  the  specified  combination 
that  is  claimed.  But  though  this  degree  of  obvious  certainty 
is  highly  desirable  in  a  combination  claim,  it  is  not  absolutely 
necessary  to  the  validity  of  such  an  one  ;  for  a  claim  may  de- 
clare that  it  covers  so  much  of  the  described  mechanism  as 
effects  a  particular  specified  result,  without  specifying  those 
parts  themselves.  In  such  a  case  it  is  a  question  of  fact  to  be 
determined  in  court,  if  necessary,  which  parts  those  are  which 
effect  that  result  and  are  therefore  covered  by  the  claim.1 
So  also,  two  or  more  claims  in  substance,  may  sometimes  be 
combined  in  one  claim  in  form.  This  is  accomplished  by  in- 
serting  in  the  claim  the  words  "  with  or  without"  before  the 
name  or  other  designation  of  one  or  more  of  the  enumerated 
parts  of  the  process,  machine,  combination,  manufacture  or 
composition  of  matter,  covered  by  that  claim.4  The  claim  of 
the  Charles  Goodyear  rubber  patent,  had  this  characteristic. 
It  was  a  claim  for  vulcanized  India  rubber,  whether  with  or 
without  other  ingredients,  chemically  altered  by  the  applica- 
tion of  heat,  substantially  as  described.6 

§  177.  Letters   patent   may   be   valid   as  to    one   or  more 

1  Brooks  v.  Fiske,  15  Howard,  212,  1852. 

1853.  *  Tuck  v.  Bramhill,  6  Blatch.  95, 

*  Seymour  v.  Osborne,  11  Wallace,  1868. 

616,  1870.  B  Rubber  Co.  v.  Goodyear,  9  Wai- 

3  SUsby  v.  Foote,  14  Howard,  218,  lace,  795,  1869. 


CHAP.   VII.]  LETTERS    PATENT.  127 

claims,  while  being  invalid  as  to  one  or  more  other  claims  in 
the  same  specification.1  But  letters  patent  which  contain  a 
needless  multiplication  of  nebulous  claims,  calculated  to  mis- 
lead the  public,  are  void  for  that  reason,  if  for  no  other.* 
This  word  "calculated"  is  the  word  used  by  the  justice 
who  announced  the  opinion  of  the  Supreme  Court  upon 
the  point.  It  is  itself  somewhat  nebulous,  for  it  is  ques- 
tionable whether  it  means  apt  or  means  intended.  Judge 
"W.  D.  SHIPMAN  was  quite  explicit,  when  deciding  a  similar 
question.  He  held  that  a  patent  is  not  void  merely  be- 
cause it  contains  a  plurality  of  claims,  each  of  which  covers 
the  same  thing,  and  covers  nothing  else,  where  there  is  no 
evidence  that  the  double  claim  was  made  with  intention  to 
mislead.8  In  the  light  of  this  decision,  the  word  "calcu- 
lated" in  the  Supreme  Court  decision,  is  seen  to  signify  in- 
tended, and  the  Supreme  Court  decision  is  therefore  to  be 
read  with  that  explanation. 

If  all  the  claims  of  a  particular  patent  are  void,  either  for 
want  of  particularity,  or  for  want  of  invention,  novelty  or 
utility,  or  for  any  other  reason  or  reasons  ;  that  patent  is  also 
void,  even  though  one  or  more  valid  claims  might  have  been 
made  and  allowed  on  the  basis  of  the  descriptive  part  of  the 
specification.4 

§  178.  The  statutory  requirements  relevant  to  particularity 
in  the  descriptions  and  claims  of  letters  patent,  are  conditions 
precedent  to  the  authority  of  the  Commissioner  of  Patents  to 
issue  such  documents  ; 5  and  if  such  a  document  is  issued, 
the  description  or  claim  in  which,  does  not  conform  to 
these  requirements,  then  that  document  is  void.'  This 
point  of  law  does  not  depend  on  the  intention  01  the  in- 
ventor, but  is  a  legal  inference  from  his  failure  to  give 

1  Russell  v.  Place,  94  U.  S.  606,  215,  1880. 

1876.  «  Seymour  v.  Osborne,  11  Wallace, 

a  Carlton  v.  Bokee,  17  Wallace,  516,  1870. 

463,1873.  «  O'Reilly  v.  Morse,  15  Howard, 

3  Tompkins  v.  Gage,  5  Blatch.  270,  62,  1853  ;  Ames  v.  Howard,  1  Sum- 
1861.  ner,  482,  1833. 

4  Wisner  u.  Grant,  5  Bann.  &  Ard. 


128  LETTERS    PATENT.  [CHAP.   VII. 

to  his  description  and  claims  the  statutory  particularity.' 
It  is  a  question  of  jurisdiction  in  the  Commissioner  of  Pat- 
ents ;  not  a  question  of  fraudulent  intent  in  the  delinquent 
patentee.  The  Commissioner  is  authorized  to  issue  letters 
patent  only  on  adequate  specifications.  If  he  issues  them  on 
inadequate  specifications,  their  invalidity  cannot  be  removed 
by  showing  that  the  inadequacy  arose  from  ignorance  and  not 
from  fraud.  This  point  of  law  is  not  shaken  by  the  fact  that 
Section  4920  of  the  Revised  Statutes,  in  providing  for  special 
defences  to  patent  suits,  under  the  general  issue  in  pleading, 
provides  that  among  such  defences,  the  defendant  may  prove 
"  that  for  the  purpose  of  deceiving  the  public  the  description 
filed  by  the  patentee  in  the  Patent  Office,  was  made  to  con- 
tain less  than  the  whole  truth  relative  to  the  invention  or  dis- 
covery, or  more  than  is  necessary  to  produce  the  desired 
effect."  There  are  several  grounds  for  this  opinion  of  the 
text  writer.  First :  An  omission  to  state  the  whole  truth  rela- 
tive to  an  invention,  is  not  necessarily  the  same  thing  as  an  in- 
sufficient description  of  that  invention.  A  specification  might 
have  one  or  more  of  several  faults  belonging  to  the  first  cate- 
gory, and  be  free  from  objection  on  the  latter  score.  One  of 
these  would  be  an  omission  to  state  some  double  use  of  which 
the  invention  is  capable.  Such  an  omission,  if  made  in  igno- 
rance of  that  double  use,  ought  not  to  in  validate  the  patent,  but 
if  made  with  a  fraudulent  intention  to  keep  that  double  use 
forever  secret,  it  ought  to  have  that  effect.  The  defence  in 
Section  4920  is  aimed  at  such  cases,  and  not  at  cases  of  in- 
sufficiency of  specification.  Second  :  The  defences  provided 
for  in  Section  4920  are  not  all  the  defences  that  may  be  inter- 
posed in  infringement  cases.  They  are  merely  the  defences 
that  may  be  interposed  under  the  general  issue.  The  defence 
of  insufficient  specification,  as  well  as  any  other  legal  defence, 
may  be  interposed  by  a  special  plea." 

§  179.  It  is  a  question  of  fact  for  a  jury  in  an  action  at  law, 
or  for  a  chancellor  in  an  action  in  equity,  to  determine  whether 

1  Grant  v.  Raymond,  6  Peters,  218,          9  Eeckendorfer  v.  Faber,  92  U.  S. 
1832.  347,  1875. 


CHAP.  Vn.]  LETTERS    PATENT.  129 

the  specification,  including  the  claim,  of  a  patent,  conforms  to 
the  statutory  requirements  relevant  to  particularity.1  That 
question  is,  in  both  tribunals,  a  question  of  evidence  and  not  a 
question  of  construction. 

§  180.  Two  or  more  inventions,  if  they  relate  to  the  same 
subject,  or  are  in  their  nature  and  operation  connected  together, 
may  be  covered  by  a  corresponding  number  of  claims  in  a  sin- 
gle letters  patent. *  On  the  other  hand,  separate  letters  pat- 
ent may  be  granted  for  different  parts  of  the  same  machine.* 
In  such  cases  it  is  proper  to  describe  the  whole  machine  in 
each  of  the  specifications,  and  to  picture  the  whole  machine  in 
each  set  of  drawings,  thus  causing  the  separate  letters  patent 
to  differ  from  each  other  only  in  their  claims."  A  plurality 
of  patents  cannot,  however,  be  granted  for  different  uses  of 
the  same  invention.5  Indeed  all  the  uses  of  an  invention  are 
covered  and  secured  by  a  single  letters  patent  for  that  inven- 
tion.' 

§  181.  To  construe  letters  patent,  is  to  determine  precisely 
what  inventions  they  cover  and  secure.  Nothing  described  in 
letters  patent,  is  secured  thereby,  unless  it  is  covered  by  a 
claim.7  The  construction  of  letters  patent  depends  therefore 
upon  the  construction  of  their  respective  claims  ;  and  the 
established  rules  by  means  of  which  claims  are  properly  con- 
strued may  constitute  the  next  subject  of  discussion. 

§182.  The  phrase  "substantially  as  described,"  or  it& 
equivalent,  when  such  a  phrase  occurs  in  a  claim,  throws  the 
investigator  back  to  the  description  for  means  of  construc- 
tion ; "  and  ,that  phrase  is  always  implied  in  claims  wherein 

1  Battin  v.  Taggert,    17  Howard,  5  McComb    v.   Brodie,   1    Woods, 

74,  1854.  153,  1871. 

8  Hogg    v.   Emerson,   6    Howard,  6  Roberts  v.  Ryer,  91  U.  S.  157, 

483,    1848  ;   McComb    v.   Brodie,    1  1875. 

Woods,  153,  1871  ;  Stevens  v.  Pritch-  '  M'Millin  v.  Rees,  5  Bann  &  Ard. 

ard,  2  Bann.  &  Ard.  390,  1876.  269,  1880  ;  Delaware  Coal  &  Ice  Co. 

3  Graham  v.  McCormick,  11  Fed.  v.  Packer,  5  Bann.  &  Ard.  296,  1880. 
Rep.  859,  1880  ;  Graham  v.  Mfg.  Co.,  8  Seymour  v.  Osborne,  11  Wallace, 
11  Fed.  Rep.  138,  1880.  516,  1870  ;  Corn-Planter  Patent,  23 

4  M'Millin  v.  Rees,  5  Bann.  &  Ard.  Wallace,  181,  1874. 
269,  1880. 


130  LETTERS    PATENT.  [CHAP.  VII. 

it  is  not  expressed.1  This  implication  follows  from  the  un- 
doubted rule,  that  while  descriptions  are  considered,  in  this 
connection,  only  for  the  purpose  of  construing  claims,'  a 
claim  should  always  be  construed  in  the  light  of  the  descrip- 
tion.1 The  drawings  attached  to  letters  patent,  may  also  be 
referred  to  for  explanation  of  anything  which  the  description 
leaves  obscure.4  But  neither  drawings  nor  descriptions  can 
enlarge  claims  ; 6  though  claims  may  be  narrowed  by  limita- 
tions or  qualifications  contained  in  the  description.8 

§  183.  Claims  which  are  functional  in  form  ;  that  is  to  say 
claims  which  literally  purport  to  cover  a  result  rather  than  a 
process  or  a  thing,  are  properly  construed  to  cover  only  the 
process  or  the  thing  which  produces  that  result,  for  otherwise 
such  claims  would  be  void.7 

§  184.  The  state  of  the  art,  to  which  an  invention  belongs, 
at  the  time  that  invention  was  made,  must  be  considered  in 
construing  any  claim  for  that  invention.8  The  leading  cases 
on  this  subject  are  McCormick  v.  Talcott  ;'  and  Railway  Co. 
V.  Sayles.10 

The  doctrine  of  the  first  of  these  cases  is  as  follows.  The 
original  inventor  of  a  machine,  will  have  a  right  to  treat  as  in- 
fringers,  all  who  make  machines  operating  on  the  same  prin- 
ciple, and  performing  the  same  functions,  by  analogous 
means,  or  equivalent  combinations  ;  even  though  the  infring- 
ing machine  be  an  improvement  on  the  original,  and  patenta- 

1  Matthews  v.  Schoneberger,  4  Fed.  7  Fuller  v.  Tentzer,  94  U.  S.  288, 

Rep.  635, 1880  ;  Westinghouse  v.  Air-  1876  ;  Parham  v.  Buttonhole  Co. 

Brake  Co.  2  Bann.  &  Ard.  57,  1875.  4  Fisher,  468,  1871  ;  Hitchcock  v. 

8  Pitts  v.  Wemple,  1  Bissell,  87,  Tremaine,  4  Fisher,  508,  1871  ;  Goes 

1855.  v,  Collins  Co.  9  Fed.  Rep.  905, 1882  ; 

3  Smith  v.  Dental  Vulcanite  Co.  Henderson  v.  Stove  Co.  2  Bann.  & 
93  U.  S.  493,  1876  ;  Lull  v.  Clark,  Ard.  608,  1877  ;   Palmer  v.  Gatling 
13  Fed.  Rep.  456,  1882.  Gun  Co.  8  Fed.  Rep.  513,  1881. 

4  Hogg  v.  Emerson,   11   Howard,  8  Carlton   v.   Bokee,   17   Wallace, 
587,  1850.  463,  1873  ;  Washing-Machine  Co.  v. 

*  Railroad  Co.  v.  Mellon,  104  U.  S.  Tool  Co.  20  Wallace,  342,  1873. 
112,  1881.  »  McCormick  v.  Talcott,  20  How- 

«  New  York  Belting  and  Packing  ard,  402,  1857. 

Co.   v.  Sibley,    15   Fed.    Rep.    389,          ">  Railway  Co.  v.  Sayles,  97  U.  S. 

1883.  554,  1878. 


CHAP.    VII.]  LETTERS    PATENT.  131 

ble  as  such.  But  if  the  invention  claimed,  be  itself  but  an 
improvement  on  a  known  machine,  by  a  mere  change  of  form 
or  combination  of  parts,  the  patentee  cannot  treat  another  as 
an  inf ringer,  who  has  improved  the  original  machine,  by  use 
of  a  different  form  or  combination,  performing  the  same  func- 
tions. The  inventor  of  the  first  improvement  cannot  invoke 
the  doctrine  of  equivalents  to  suppress  any  other  improvement 
which  is  not  a  mere  colorable  invasion  of  the  first. 

The  doctrine  of  the  Sayles  case  is  as  follows.  If  one  in- 
ventor, in  a  particular  art,  precedes  all  the  rest,  and  strikes 
out  something  which  underlies  all  that  they  produce,  he  sub- 
jects them  to  tribute.  But  if  the  advance  toward  the  thing 
desired,  is  gradual  so  that  no  one  can  claim  the  complete  whole, 
then  each  inventor  is  entitled  to  the  specific  form  of  device 
which  he  produced,  and  every  other  inventor  is  entitled  to  his 
own  specific  form,  so  long  as  it  differs  from  those  of  his  com- 
petitors and  does  not  include  theirs. 

The  meaning  of  these  two  cases  seems  to  be  that  every  in- 
ventor is  entitled  to  claim  whatever  he  was  the  first  to  invent. 
If  A.  B.  is  the  first  to  invent  a  machine  to  perform  a  particu- 
lar work,  and  if  his  machine  is  substantially  incorporated  into 
subsequent  machines  which  do  that  work,  then  A.  B.  is  entitled 
to  such  a  construction  of  his  patent  as  will  cover  those  later 
machines  ;  but  if  C.  D.  is  a  mere  improver  on  A.  B.'s 
machine,  C.  D.  is  not  entitled  to  such  a  construction  of  his 
patent,  as  will  cover  the  machines  of  still  later  inventors,  who 
have  improved  on  A.  B.'s  machine  in  a  different  manner.  It 
follows  from  these  doctrines  that  C.  D.'s  patent  must  be  con- 
strued in  the  light  of  A.  B.'s  machine,  and  indeed  of  every 
other  similar  and  older  structure  ;  which  is  the  same  thing  as 
saying  that  every  patent  must  be  construed  in  the  light  of  the 
state  of  the  art,  at  the  time  the  invention  it  covers  was  pro- 
duced. 

§  185.  "  A  patent  should  be  construed  in  a  liberal  spirit  to 
sustain  the  just  claims  of  the  inventor.  This  principle  is  not 
to  be  carried  so  far  as  to  exclude  what  is  in  it,  or  to  interpo- 
late anything  which  it  does  not  contain.  But  liberality,  rather 
than  strictness,  should  prevail  where  the  fate  of  the  patent  is 


132  LETTERS    PATENT.  [CHAP.  VII. 

involved,  and  the  question  to  be  decided  is  whether  the  in- 
ventor shall  hold  or  lose  the  fruits  of  his  genius  and  his 
labors."  '  "  Patents  for  inventions  are  to  receive  a  liberal 
construction,  and  under  the  fair  application  of  the  rule,  ut  res 
inagis  valeat  quam  pereat,  are,  if  practicable,  to  be  so  inter- 
preted as  to  uphold  and  not  to  destroy  the  right  of  the  in- 
ventor."* "While  it  is  undoubtedly  true,  that  a  patentee 
may  so  restrict  his  claim  as  to  cover  less  than  what  he  in- 
vented, or  may  limit  it  to  one  particular  form  of  a  machine, 
excluding  all  other  forms,  though  they  also  embody  his  inven- 
tion, yet  such  an  interpretation  should  not  be  put  upon  his 
claim  if  it  can  fairly  be  construed  otherwise. ' ' 3 

These  are  the  declarations  of  the  Supreme  Court  relevant 
to  the  proper  liberality  to  be  observed  in  construing  patents. 
That  liberality  as  often  shows  itself  in  a  narrow  construction 
as  in  a  broad  one  ;  for  a  narrow  construction  may  be  as  neces- 
sary to  establish  the  novelty  of  a  patent,  as  a  broad  construc- 
tion is  to  lay  the  foundation  for  proof  of  its  infringement. 
Therefore  when  it  becomes  necessary  to  construe  a  claim  nar- 
rowly, in  order  that  its  novelty  may  not  be  negatived  by  the 
prior  art,  courts  will  give  such  a  narrow  construction,  if  they 
can  do  so  consistently  with  the  language  of  the  claim  and  of 
the  description.4 

§  186.  "  It  is  well  known  that  the  terms  of  the  claim  in  let- 
ters patent  are  carefully  scrutinized  in  the  Patent  Office.  Over 
this  part  of  the  specification  the  chief  contest  generally  arises. 
It  defines  what  the  office,  after  a  full  examination  of  previous 
inventions  and  the  state  of  the  art,  determines  the  applicant  is 
entitled  to.  The  courts,  therefore,  should  be  careful  not  to 
enlarge,  by  construction,  the  claim  which  the  Patent  Office  has 
admitted,  and  which  the  patentee  has  acquiesced  in,  beyond 
the  fair  interpretation  of  its  terms."  *  "As  patents  are  pro- 

1  Rubber  Co.  v.  Goodyear,  9  Wai-  «  Klein    v.   Russell,    19    Wallace, 

lace,  788,  1869.  433,  1873  ;  Jones  v.  Barker,  11  Fed. 

*  Tnrrill  v.  Railroad  Co.  1  Wallace,  Rep.  600,  1882. 

491.  1863.  »  Burns  v.  Meyer,   100  U.  S.  672, 

8  Winans  v.  Denmead,  15  Howard,  1879. 
330,  1853. 


CHAP.  VII.]  LETTERS    PATENT.  138 

cured  escparte,  the  public  is  not  bound  by  them,  but  the  pat- 
entees are.  And  the  latter  cannot  show  that  their  invention 
is  broader  than  the  terms  of  their  claim  ;  or,  if  broader,  they 
must  be  held  to  have  surrendered  the  surplus  to  the 
public."1 

These  are  the  declarations  of  the  Supreme  Court  relevant  to 
the  proper  strictness  to  be  observed  in  construing  patents. 
Therefore,  when  a  claim  clearly  covers  a  combination  of  cer- 
tain elements,  it  cannot,  by  construction,  be  so  altered  as  to 
cover  fewer  elements,  and  thus  be  rendered  more  likely  to  be 
infringed.3  So  also,  a  claim  for  a  process,  substantially  as 
described,  cannot  be  construed  to  cover  an  incidental  process 
set  forth  in  the  description,  but  merely  recommended  therein 
instead  of  being  required  or  being  stated  to  be  essential  to  the 
principal  process  of  the  patent.3 

§  187.  Letters  patent  may  be  construed  in  the  light  of  the 
contemporaneous  construction  of  the  inventor  ;  and  to  this 
end  recourse  may  be  had  to  the  files  of  the  application  papers, 
to  see  what  changes  were  made  in  the  description  and  claims 
while  the  application  was  pending  in  the  Patent  Office.4 

§  188.  The  laws  which  were  in  force  when  any  particular 
patent  was  granted,  are  the  laws  according  to  which  it  must  be 
construed  ; 6  and  a  special  statute  relevant  to  any  particular 
patent,  is  engrafted  on  the  general  patent  statutes,  and  must 
be  construed  harmoniously  with  them." 

§  189.  Questions  of  construction  are  questions  of  law  for 
the  judge,  not  questions  of  fact  for  the  jury.7  As  it  cannot 
be  expected,  however,  that  judges  will  always  possess  the  req- 
uisite knowledge  of  the  meaning  of  the  terms  of  art  or 
science  used  in  letters  patent,  it  often  becomes  necessary 


1  Keystone  Bridge  Co.  v.  Iron  Co.  5  McClurg  v.  Kingsland,  1  Howard, 
95  U.  S.  278,  1877.  202,  1843. 

2  Le  Fever  v.  Remington,  13  Fed.  8  Evans  v.  Eaton,  3  Wheaton,  454, 
Eep.  86,  1882.  1818  ;    Bloomer    v.   McQuewan,    14 

8  Sewell  v.  Jones,  91  U.  S.  185,  Howard,  539,  1852. 

1875.  '  Winans  v.  Denmead,  15  Howard, 

4  Trader  u.    Messmore,   1   Ban.  &  330,  1853. 
Ard.  639,  1875. 


134:  LETTERS   PATENT.  [CHAP.  VII. 

that  they  should  avail  themselves  of  the  light  furnished  by  ex- 
perts relevant  to  the  significance  of  such  words  and  phrases.1 
The  judges  are  not  however  obliged  to  blindly  follow  such 
testimony.  They  may  disregard  it,  if  it  appears  to  them  to 
be  unreasonable.11  While  the  testimony  of  experts,  relevant 
to  the  meaning  of  particular  words  or  phrases  in  letters  patent, 
is  to  this  extent  admissible  ;  such  testimony  is  wholly  inadmis- 
sible relevant  to  the  construction  of  the  letters  patent  as  a 
whole.* 

§  190.  In  the  absence  of  contrary  evidence,  the  invention 
covered  by  a  particular  letters  patent,  is  presumed  to  be  iden- 
tical with  that  covered  by  the  application  on  which  those  let- 
ters patent  were  granted.4 

§  191.  All  persons  are  bound  to  take  notice  of  the  contents 
of  all  letters  patent  of  the  United  States,  because  those  letters 
patent  are  matters  of  public  record.6 

1  Loom  Co.  v.  Higgins,  105  U.  S.  252, 1853. 

580.  1881.  <  Loom  Co.  v.  Higgins,  105  U.  S. 

*  Winans  v.  Railroad  Co.  21  How-  580,  1881. 

ard,  88,  1858.  *  Boyden  v.  Burke,  14  Howard, 

3  Corning  v.  Burden,  15  Howard,  575,  1852. 


CHAPTEK  VIII. 

DISCLAIMERS. 


192.  Statutory  authorization  of  dis- 
claimers. 

193.  Statutory   prescriptions,    rele- 
vant to  disclaimers. 

194.  Errors  which  justify  disclaim- 
ers. 

195.  Mistakes  of  fact,   relevant  to 
novelty. 

196.  Mistakes  of  law,  relevant  to  in- 
vention. 

197.  Claims  void  for  want  of  utility. 

198.  Combination  claims. 

199.  Compound  claims. 

200.  Immaterial  claims. 

201.  Keissue  claims. 


202.  Fraudulent  or  deceptive  inten- 
tion. 

203.  Effect  of  unreasonable  delay  to 
file  a  disclaimer. 

204.  Beginning  of  unreasonable  delay 
to  file  a  disclaimer. 

205.  Costs,  where  a   necessary   dis- 
claimer has  not  been  filed. 

206.  Extent  of  disclaimant'  s  interest. 

207.  Construction  of  letters  patent 
after  a  disclaimer. 

208.  Disclaimers   filed  pending  lit- 
igation. 

209.  Disclaimers  demanded  by  ju- 
dicial decisions. 


§  192.  THE  statutory  provisions  relevant  to  disclaimers  orig- 
inated in  1837,  and  have  never  been  substantially  changed. 
Sections  7  and  9  of  the  Patent  Act  of  that  year,1  embodied 
those  provisions  ;  and  those  sections  continued  in  force  till 
July  8,  1870,  when  they  were  subtantially  re-enacted  as  Sec- 
tions 54  and  60  of  the  Consolidated  Patent  Act  of  that  date.* 
In  1874,  the  latter  sections  were,  in  their  turn,  re-enacted, 
without  any  material  change,  as  Sections  4917  and  4922  of 
the  Revised  Statutes.  It  would  have  been  better  statute  writ- 
ing, if  those  two  sections  had  always  been  blended  together 
into  one  clear  and  comprehensive  paragraph.  Referring  to 
the  same  subject,  and  standing,  as  they  always  have,  in  the 
same  statute,  they  must  undoubtedly  be  construed  together  ; 


1  5  Statutes  at  Large,  Ch.  45,  Sec- 
tions 7  and  9,  p.  193. 

2  16   Statutes  at  Large,  Ch.  230, 


Sections  54  and  60,  p.  206  ;  Taylor 
v.  Archer,  8  Blatch.  318, 1871. 


136  DISCLAIMERS.  [CHAP.  VIII. 

and  the  law  they  embody  must  be  set  forth,  by  extracting  from 
both  sections,  all  the  material  meaning  of  both,  and  by  incor- 
porating that  meaning,  together  with  the  case  law  of  the  sub- 
ject, into  one  systematic  explanation.  Let  that  therefore  be 
the  present  attempt. 

§  193.  Whenever,  through  inadvertence,  accident  or  mis- 
take, and  without  any  fraudulent  or  deceptive  intention,  a 
patentee  has,  in  his  specification,  claimed  materially  more  than 
that  of  which  he  was  the  first  inventor,  his  patent  shall  be 
valid  for  whatever  is  justly  his  own  ;  and  every  such  patentee, 
his  executors,  administrators  or  assigns,  whether  of  the  whole 
or  any  sectional  interest  in  the  patent,  may  maintain  a  suit  at 
law  or  in  equity,  for  the  infringement  of  such  part,  if  it  is  a 
material  and  substantial  part  of  the  thing  patented,  and  is  def- 
initely distinguishable  from  the  parts  claimed  without  right. 
But  in  every  such  case,  in  which  a  judgment  or  decree  shall 
be  rendered  for  the  plaintiff,  no  costs  shall  be  recovered,  unless 
the  proper  disclaimer  was  entered  in  the  Patent  Office,  before 
the  commencement  of  the  suit.  But  no  patentee  shall  be 
entitled  to  maintain  any  such  suit,  if  he  has  unreasonably 
neglected  or  delayed  to  enter  a  disclaimer.  And  any  such 
patentee,  his  heirs  or  assigns,  whether  of  the  whole  or  of  any 
sectional  interest  therein,  may  on  payment  of  the  fee  required 
by  law,  make  disclaimer  of  such  parts  of  the  subject-matter  of 
the  patent,  as  he  shall  not  choose  to  longer  claim,  stating 
therein  the  extent  of  his  interest  in  such  patent.  Such  dis- 
claimer shall  be  in  writing,  attested  by  one  or  more  witnesses, 
and  recorded  in  the  Patent  Office,  and  shall  thereafter  be  con- 
sidered a  part  of  the  original  specification,  to  the  extent  of  the 
interest  possessed  by  the  claimant  and  by  those  claiming  under 
him  after  the  record  thereof.  But  no  such  disclaimer  shall 
effect  any  action  pending  at  the  time  of  its  being  filed,  except 
BO  far  as  may  relate  to  the  question  of  unreasonable  neglect  or 
delay  in  filing  it.1 

§  194.  The  primary  fact  which  brings  the  law  stated  in 
the  last  section  into  play,  is  the  claiming  by  a  patentee  of 

J  Revised  Statutes,  Sections  4917  and  4922  blended  together. 


CHAP.   VIII.]  DISCLAIMERS.  137 

materially  more  than  that  of  which  he  was  the  first  inventor. 
Such  errors  may  spring  from  inadvertence.  That  is  to  say, 
they  may  spring  from  failure,  on  the  part  of  the  writer  of  the 
claims,  to  exercise  proper  care  in  penning  them.  So  also,  they 
may  arise  from  accident :  from  chances  against  which  even  dil- 
igent care  cannot  always  guard.  But  mistake  is  the  most 
common  source  of  such  errors  ;  and  such  errors  may  arise 
from  mistake  of  fact  or  from  mistake  of  law. 

§  195.  Mistakes  of  fact,  relevant  to  how  much  of  a  de- 
scribed process,  machine  or  manufacture  was  first  invented  by 
its  patentee,  frequently  follow  from  lack  of  full  information 
touching  what  was  previously  invented  by  others  in  the  same 
department  of  the  useful  arts.  Litigation  may  alone  disclose 
the  fact  that  the  patentee's  claims  are  too  numerous  or  too 
broad  to  be  consistent  with  novelty.  Whenever  this  occurs,  it 
is  clear  that  the  patentee  ought  no  longer  to  appear  to  hold  an 
exclusive  right  to  anything  which  he  was  not  the  first  to  in- 
vent. To  this  end,  the  statute  provides  that  he  must  disclaim 
that  part,  within  a  reasonable  time,  or,  in  default  thereof, 
must  suffer  the  statutory  consequences.  On  the  other  hand  it 
is  equally  clear,  that  if  the  patentee  is  willing  to  eliminate 
from  his  claims,  everything  which  later  information  shows  had 
been  invented  before  him,  he  ought  to  be  allowed  to  retain  his 
exclusive  right  to  the  residue.  To  this  end,  the  statute  provides, 
that  if  within  a  reasonable  time,  he  disclaims  what  was  an- 
other's, he  shall  be  enabled  to  enforce  his  patent  as  far  as  it 
covers  what  was  his  own  invention. 

§  196.  A  mistake  of  law,  which  consists  in  claiming  some- 
thing not  patentable,  may  also  be  remedied  by  disclaimer.1 
The  law  which  requires  and  permits  a  patentee  to  disclaim,  is 
not  penal  but  remedial.  It  is  intended  for  the  protection  of 
the  patentee,  as  well  as  for  the  protection  of  the  public.  The 
evil  to  be  remedied  is  the  same,  where  a  patentee  has  claimed 
more  than  he  ought,  whether  that  result  sprang  from  the 
fact  that  another  invented  it  before  him,  or  sprang  from  the 
fact  that  what  he  produced  was  not  an  invention  at  all.  For 

'  O'Keilly  u.  Morse,  15  Howard,  120,  1853. 


138  DISCLAIMERS.  [CHAP.   VHI. 

this  reason,  the  Supreme  Court  held  that  the  eighth  claim  of 
Morse  might  be  disclaimed,  after  having  been  held  void  for 
want  of  patentability,  with  the  same  effect  as  though  it  had 
been  held  void  for  want  of  novelty.  The  same  reason  would 
also  permit  a  patentee  to  disclaim  any  claim  which  is  void  for 
want  of  invention.  Indeed  the  statute  expressly  applies  to 
such  a  case,  for  no  man  can  be  the  first  inventor  of  anything 
which  is  not  an  invention.  He  may  be  its  first  discoverer,  if 
it  is  a  law  of  nature,  or  its  first  constructor,  if  it  is  a  product  of 
mere  mechanical  skill,  but  its  first  inventor  he  cannot  be. 

§  197.  There  appears  to  be  no  warrant  in  the  statute,  for 
disclaiming  any  claim  which  is  void  for  want  of  utility,  and 
for  no  other  cause.  An  inventor  of  a  new  thing  may  gener- 
ally ascertain  its  character  in  point  of  utility  before  applying 
for  a  patent.  If  he  can  do  so,  he  ought  to  do  so,  and  thus 
shield  the  public  from  the  waste  of  time  involved  in  examin- 
ing and  judging  useless  contrivances.  Where  a  patent  has  but 
one  claim,  and  where  the  matter  covered  by  that  claim  is  use- 
less, no  disclaimer  could  make  that  patent  valid.  Where  a 
part  only  of  the  claims  of  a  patent  are  void  for  want  of 
utility,  and  for  no  other  cause,  the  void  claims  are  not  injuri- 
ous to  the  valid  ones,  and  therefore  no  disclaimer  is  needed  in 
any  such  case.  Where  a  claim  purports  to  cover  a  thing  con- 
structed in  either  of  several  ways  ;  and  where  that  thing  is 
useless  if  constructed  in  one  of  those  ways,  and  useful  if  con- 
structed in  another,  the  claim  cannot  be  limited  to  the  useful 
construction,  by  means  of  any  disclaimer  ;  for  it  is  not  the  office 
of  a  disclaimer  to  reform  or  to  alter  the  description  or  claim  of 
an  invention.1  Its  function  is  to  eliminate  from  letters  patent 
all  claims  for  inventions  which  were  not  new  with  the  pat- 
entee, and  all  claims  for  things  which  were  not  inventions 
with  him. 

§  198.  The  right  to  file  disclaimers  is  expressly  limited  to 
cases  where  the  actual  invention  of  the  patentee  is  a  material 
and  substantial  part  of  the  thing  patented.4  Parts  of  combi- 

1    Hailes  v.  Albany  Stove  Co.   16          !  Revised  Statutes,  Sections  4917 
Fed.  Rep.  242,  1883.     White  v.  Mfg.       and  4922. 
Co.  24  Off.  Gaz.  205,  1883. 


CHAP.  VIII.]  DISCLAIMERS.  139 

nations  do  not  come  within  this  category,  for  a  combination  is 
an  entirety,  and  if  one  of  the  elements  is  given  np,  the  thing 
claimed  disappears.  The  disclaimer  provisions  cannot  be  made 
to  modify  and  thereby  save  combination  claims,  for  unless  the 
combination  is  maintained  the  whole  of  the  invention  fails.1 

§  199.  The  statutes  also  provide,  that  in  order  to  save  a  pat- 
ent by  a  disclaimer,  the  part  retained  must  be  definitely  dis- 
tinguishable from  the  part  eliminated.  It  does  not  follow, 
however,  that  each  claim  of  a  patent  must  be  wholly  dis- 
claimed, or  wholly  retained.  On  the  contrary,  there  are  cases 
where  two  or  more  inventions  are  covered  by  one  claim  ;  and 
in  such  cases,  a  disclaimer  may  be  made  to  expunge  one  of 
those  inventions  from  that  claim,  without  disturbing  the 
others.* 

In  the  first  of  the  cases  just  cited,  the  claim  was  :  "  The 
forming  of  packing  for  pistons  or  stuffing  boxes  of  steam 
engines,  and  for  like  purposes,  out  of  saturated  canvas,  so  cut 
that  the  thread  or  warp  shall  run  in  a  diagonal  direction  from 
the  line  or  centre  of  the  roll  of  packing,  and  rolled  into  form, 
either  in  connection  with  the  india-rubber  core,  or  other  elas- 
tic material,  or  without,  as  herein  set  forth. ' '  Litigation  showed 
that  such  a  thing,  without  a  core,  was  old,  and  the  patentee 
therefore  entered  a  disclaimer  to  that  part  of  the  claim  which 
covered  the  packing  without  the  core.  Justice  BLATCHFORD 
held  that  disclaimer  to  be  proper,  and  to  be  effectual. 

In  the  second  case  cited,  the  claim  was,  ' '  The  use  and  appli- 
cation of  glue,  or  glue  composition,  in  the  tubing,  substan- 
tially as  described,  for  the  purpose  of  making  the  flexible  tub- 
ing gas  tight,  whether  of  cloth  or  rubber,  or  other  gum." 
During  the  pendency  of  the  suit,  and  after  considerable  testi- 
mony had  been  taken,  a  disclaimer  was  entered  to  that  part  of 
the  claim  of  the  patent  which  claimed  as  an  improvement  in 
flexible  tubing  for  illuminating  gas,  the  use  and  application  of 
glue  ;  thereby  limiting  the  claim  to  the  use  and  application  of 


1  Vance  v.  Campbell,  1  Black.  429,       1868  ;    Taylor  v.  Archer,  8  Blatoh. 
1861.  318,  1871. 

»  Tuck  v.  Bramhill,  G  Blatch.  95, 


140  DISCLAIMERS.  [CHAP. 

glue  composition  in  the  tubing,  substantially  as  described. 
This  disclaimer  was  also  upheld  by  the  same  distinguished 
chancellor  who  upheld  the  disclaimer  in  the  other  case. 

§  200.  There  is  one  difference  between  the  two  disclaimer 
sections,  of  the  Revised  Statutes,  which  it  is  now  requisite  to 
mention.  Section  4917  contemplates  disclaimers  as  being 
proper  whenever  a  patentee  has  claimed  more  than  that  of 
which  he  was  the  first  inventor  ;  while  Section  4922  attends 
only  to  cases  wherein  the  excess  is  a  material  or  substantial 
part  of  the  thing  patented.  This  qualification  should  be  in- 
serted in  the  two  sections,  as  construed  together,  because  Sec- 
tion 4922  is  the  only  one  that  prescribes  any  evil  result  from  a 
failure  to  disclaim.  Neither  section  visits  any  infliction  on 
any  patentee,  for  omitting  to  disclaim  anything  which  is  an 
immaterial  part  of  the  thing  patented.  If,  therefore,  a  pat- 
entee omits  to  disclaim  such  a  part,  when  he  discovers  it  to 
have  been  known  before  his  invention  thereof,  or  learns  that 
it  is  not  an  invention  at  all.  he  thereby  loses  no  right,  and 
incurs  no  inconvenience. !  To  file  a  disclaimer,  in  such  a  case, 
is  an  act  which  is  at  once  harmless  and  unnecessary. 

§  201.  Reissue  patents,  as  well  as  original  patents,  are 
entitled  to  the  benefits  of  the  law  relevant  to  disclaimers  ;  and 
that  too,  even  where  the  matter  disclaimed  was  not  claimed  in 
the  original,  but  only  in  a  reissue  granted  upon  its  surrender.* 
Where  an  original  patent  was  surrendered,  and  then  reissued 
in  several  divisions  ;  that  is  to  say,  where  several  reissue  pat- 
ents were  granted  for  separate  inventions  described  in  an  orig- 
inal patent,  a  suit  based  upon  one  of  those  divisions  will  be 
unaffected  by  th*  fact  that  a  claim  in  another  division,  is  in- 
valid for  want  of  novelty,  or  for  want  of  invention.  The 
statute  relevant  to  disclaimers  has  no  application  to  such 
cases.' 

§  202.  Fraudulent  or  deceptive  intention,  if  it  existed  on 

1  Hall    v.    Wiles,   2   Blatch.   199,  Blatch.  69,  1879  ;  Tyler  v.  Galloway, 

1851  ;  Peek  v.  Frame,  5  Fisher,  212,  12  Fed.  Rep.  567,  1882. 

1871.  8  Elastic  Fabrics  Co.  v.  Smith,  100 

•  O'Reilly  v.  Morse,  15  Howard,  U.  S.  Ill,  1879. 
62,  1853  ;  Schillings  v.  Gunther,  17 


CHAP.  VIII.]  DISCLAIMERS.  141 

the  part  of  a  patentee,  when  claiming  materially  more  than 
that  of  which  he  was  the  first  inventor,  or  when  claiming  that 
which  was  not  patentable,  will  rightly  prevent  him  from  re- 
ceiving any  benefit  from  a  disclaimer.  This  statutory  pro- 
vision is  in  harmony  with  the  principles  of  equity  ;  a  system 
which  always  declines  to  extract  persons  from  trouble  which 
arose  from  their  own  moral  turpitude. 

§  203.  The  statement  in  Section  4917,  that  under  the  cir- 
cumstances therein  mentioned,  a  patentee's  patent  shall  be 
valid  as  to  all  that  part  of  the  invention  which  is  truly  and 
justly  his  own,  is  to  be  construed  in  connection  with  the  pro- 
vision in  Section  4922,  that  the  patentee  shall  not  be  entitled 
to  recover  in  any  suit,  if  he  unreasonably  neglects  or  delays  to 
enter  a  disclaimer.  "When  so  construed,  the  two  sections 
enact  that  where  a  patentee  claims  materially  more  than  that 
which  he  was  the  first  to  invent,  his  patent  is  void,  unless  he 
has  preserved  the  right  to  disclaim  the  surplus,  and  that  he 
may  fail  to  preserve  that  right,  by  unreasonable  neglect  or 
delay  to  enter  a  disclaimer  in  the  Patent  Office. 

§  204.  Unreasonable  neglect  or  delay  to  file  a  necessary  dis- 
claimer, begins  when  knowledge  is  brought  home  to  the  pat- 
entee, that  the  inventor  upon  whose  account  the  patent  was 
granted,  was  not  the  first  inventor  of  a  particular  thing 
claimed  in  the  patent  and  material  to  the  subject  of  the  pat- 
ent as  a  whole.1  If,  however,  there  is  reasonable  ground  for 
difference  of  opinion  relevant  to  the  question  whether  the 
prior  patent,  or  the  prior  process,  or  the  prior  thing,  so 
brought  home  to  the  knowledge  of  the  patentee,  really  nega- 
tives the  novelty  of  anything  claimed  by  him  ;  then  unreason- 
able delay  to  file  a  disclaimer  will  not  begin  until  that  question 
is  finally  settled  by  the  courts."  The  question  whether  the 
delay  to  enter  a  disclaimer,  in  a  particular  case,  was  or  was 
not  unreasonable,  is  a  mixed  question  of  law  and  fact,  to  be 
decided  by  the  jury  in  accordance  with  proper  instructions 

1  Singer  v.  Walmsley,  1  Fisher,  s  Seymour  v.  McCormick,  19  How- 

558, 1860;  Parker  v.  Stiles,  5  McLean,  ard,   106,  1856  ;  Potter  v.  Whitney, 

44,  1849  ;  O'Reilly  v.  Morse,  15  How-  1  Lowell,  87,  1866. 
ard,  121,  1853. 


142  DISCLAIMERS.  [CHAP.  VIII. 

from  the  court.1  In  the  case  of  Seymour  v.  McCormick,* 
the  Supreme  Court,  when  speaking  of  the  question  of  the 
necessity  for  a  disclaimer  in  that  case,  and  of  the  question  of 
unreasonable  delay  in  entering  one,  said  :  "  Under  the  circum- 
stances, the  question  is  one  of  law."  The  peculiar  colloca- 
tion of  the  paragraph,  has  caused  some  courts,8  to  suppose 
that  the  question  thus  characterized,  was  the  question  of  delay  ; 
but  really  it  must  have  been  the  question  of  necessity.  The 
latter  depended  wholly  upon  the  construction  of  the  patent, 
and  was  therefore  a  question  of  law.  Whether  or  not  a  par- 
ticular instance  of  delay  was  unreasonable,  must  largely  de- 
pend upon  the  circumstances  which  surrounded  the  person 
chargeable  therewith.  "What  those  circumstances  were  is  a 
question  of  fact.  Whether  they  constituted  an  excuse  for  the 
delay,  is  a  question  of  law.  Whether  or  not  a  particular  in- 
stance of  delay  to  enter  a  necessary  disclaimer,  was  unreason- 
able, is  therefore  a  mixed  question  of  law  and  of  fact. 

§  205.  No  costs  can  be  recovered  in  any  infringement  suit, 
the  final  decision  of  which  shows  a  necessity  for  a  disclaimer, 
unless  such  a  disclaimer  was  entered  in  the  Patent  Office  be- 
fore the  commencement  of  the  suit.4  This  rule  applies  even 
to  cases  where  the  delay  to  enter  the  disclaimer  was  not  un- 
reasonable.6 But  a  verdict  on  all  the  claims  of  a  patent, 
entitles  the  plaintiff  to  costs,  even  if,  after  that  verdict,  he 
tiles  a  disclaimer  to  one  or  more  of  the  claims  of  that  patent." 

Judge  LOWELL  has  said  that  where  a  plaintiff  sues  on  a  part 
of  the  claims  of  his  patent  only,  the  defendant  will  not  be 
permitted  to  raise  any  issue  relevant  to  the  validity  of  any 
other  claim,  with  intent  to  show  a  necessity  for  a  disclaimer, 


1  Brooks    v.   Jenkins,  3  McLean,  *  Revised  Statutes,  Section  4922  ; 

449,  1844  ;    Washburn  v.    Gould,  3  Eeed  v.  Cutter,  1  Story,   591,  1841  ; 

Story  122,  1844  ;  Burden  v.  Corning,  Burdett  v.   Estey,  5   Bann.    &   Ard. 

2  Fisher,  477,  1864.  309,  1880.     Proctor  v.  Brill,  16  Fed. 

8  Seymour  v.  McCormick.  19  How-  Eep.  791,  1883. 

aid,  106,  1856.  *  O'Reilly  v.  Morse,   15  Howard, 

4  Singer  v.  Walmsley,  1  Fisher,  558,  121,  1853. 

1860  ;  Parker  v.  Stiles,  5   McLean,  «  Peek  v.  Frame,   5  Fisher,  212, 

44,  1849.  1871. 


CHAP.   VIII.]  DISCLAIMERS. 

and  thus  to  escape  costs.1  His  Honor  based  this  opinion  on 
the  fact  that  more  expense  might  be  incurred  litigating  such 
a  collateral  issue,  than  would  be  justified  by  the  amount  of  the 
costs  depending  upon  its  decision.  But  general  rules  of  law 
can  hardly  be  based  on  considerations  of  what  is  expedient  in 
a  part  only  of  the  cases  to  which  those  rules  purport  to  apply. 
It  may  happen  that  the  costs  involved  in  a  particular  litiga- 
tion are  large,  while  the  expense  involved  in  proving  a  neces- 
sity for  a  disclaimer  of  some  one  claim  of  the  patent  is  small. 
The  difference  between  the  two  sums  may  sometimes  be  meas- 
ured by  thousands  of  dollars,  A  judgment  or  a  decree  may 
be  largely  lessened  and  justly  lessened,  if  a  defendant  is  per- 
mitted to  prove  a  necessity  for  a  disclaimer  of  a  claim  not 
sued  upon.  In  view  of  these  considerations,  it  is  possible  that 
the  law  will  finally  be  settled  otherwise  than  as  Judge 
LOWELL'S  remark  would  seem  to  forecast. 

§  206.  Disclaimers  are  required  to  state  the  extent  of  the 
interest  which  is  held  by  the  disclaimant  in  the  patent  in- 
volved.8 If,  however,  the  disclaimant  is  the  original  pat- 
entee, and  the  disclaimer  states  that  fact,  and  is  silent  respect- 
ing any  transfer  of  any  part  of  it,  the  fair  implication  is  that 
he  still  owns  the  whole,  and  that  implication  is  a  sufficient 
statement  of  the  interest  of  the  patentee.3  So  also,  if  an 
executor  or  administrator,  in  whose  name  a  patent  has  been 
extended,  states  in  his  disclaimer,  that  he  is  the  patentee,  and 
refers  to  the  patent  as  showing  his  interest,  that  is  a  sufficient 
statement  of  his  interest  in  the  patent.4  But  if  one  only,  of 
several  joint  owners  or  owners  in  common,  of  a  patent, 
should  file  a  disclaimer,  no  other  owner  could  avail  himself  of 
its  benefits,  nor  could  it  aifect  a  suit  brought  by  all  the  owners 
jointly.5 

§  207.  The  construction  of  a  patent  after  a  disclaimer  has 
been  properly  entered,  must  be  the  same  that  it  would  have 

1  American    Bell    Telephone  Co.  4  Brooks  v.  Jenkins,    3  McLean, 

v.  Spencer,  8  Fed.  Hep.  ,512,  1881.  432,  1844. 

*  Revised  Statutes,  Section  4917.  6  Wyeth  v.  Stone,    1  Story,  294, 

3  Silsby  v.  Foote,  14  Howard,  221,  1840. 
1852. 


144:  DISCLAIMERS.  [CHAP.   VIII. 

been  if  the  matter  so  disclaimed  had  never  been  claimed.1 
No  disclaimer,  in  order  to  be  effectual,  needs  to  eliminate  any- 
thing from  the  description  ;  though  no  harm  will  follow  from 
such  elimination  if  it  is  confined  to  matter  which  is  dis- 
claimed, and  which  is  not  needed  to  show  the  nature  of  the  in- 
vention which,  after  disclaimer,  the  patent  continues  to  cover.4 

§  208.  Disclaimers  may  be  filed  pending  a  suit  on  the  patent, 
but  in  that  event,  the  plaintiff,  even  if  he  prevails  in  the  suit, 
can  recover  no  costs.3  The  filing  of  a  disclaimer,  at  that 
stage  of  affairs,  does  not  affect  the  pending  action,  except  so  far 
as  it  may  bear  upon  the  question  whether  or  not  there  was 
unreasonable  delay  before  filing  it.4  That  question  is  an  open 
one,  until  decided  on  its  merits,  regardless  of  whether  the  dis- 
claimer was  filed  before  or  after  the  bringing  of  the  suit.8 
The  sooner  a  necessary  disclaimer  is  filed,  the  less  danger  exists 
that  the  preceding  delay  will  be  held  unreasonable.  For  that 
reason,  and  for  that  reason  alone,  it  is  sometimes  wiser  to  file 
a  disclaimer  pending  a  suit,  than  to  wait  till  the  case  is  heard, 
or  still  longer,  till  it  is  decided. 

§  209.  An  important  question  arises,  when  a  Circuit  Court, 
before  any  disclaimer  has  been  filed,  decides  that  a  part  of  the 
claims  of  the  patent  in  suit  are  valid,  and  have  been  infringed 
by  the  defendant,  while  another  parjt  are  void  for  want  of 
novelty,  or  for  want  of  invention,  and  ought  therefore  to  be 
disclaimed.  Ought  the  chancellor,  in  such  a  case,  to  enter  a 
decree  for  an  injunction  and  an  account  on  the  valid  claims, 
and  allow  the  complainant  to  disclaim  the  others  or  not,  as  lie 
deems  most  prudent  ?  Or  ought  the  chancellor  to  refuse  both 
the  injunction  and  the  account,  till  the  complainant  shall 
have  filed  a  disclaimer  ?  Or  ought  the  chancellor  to  grant  an 
injunction  whether  the  complainant  disclaims  or  not,  while 
refusing  an  account  till  after  lie  shall  have  done  so  ?  Or  ought 
the  chancellor  in  case  the  complainant  declines  to  disclaim,  to 

1  Dunbar  v.  Myers,  94  U.  S.  187,  1874. 
1876.  «  Kevised  Statutes,  Section  4917  ; 

8  Schillinger  v.  Gunther,  17  Blatch.  Tuck  v.  Bramhill,  6  Blatch.  95,  1868. 
69,  1879.  »  Reed  v.  Cutter,  1  Story,  590, 

3  Smith  v.  Nichols,  21  Wallace,  117,  1841. 


CHAP.  VIII.]  DISCLAIMERS.  145 

refuse  an  injunction,  and  grant  a  decree  for  an  account  ?  The 
second  of  these  courses  has  been  the  practice  followed  by  Jus- 
tice BLATCHFORD  ;  '  and  by  Judge  WALLACE  ; "  Judge  SHIP- 
MAN  s  and  Judge  WHEELER.*  The  third  was  that  adopted 
by  Judge  CADW  ALLADER.  5  The  point  has  never  been  decided 
by  the  Supreme  Court,  though  the  action  of  that  tribunal,  in 
O'Reilly  v.  Morse  ;"  appears  to  favor  the  first  of  the  four 
suggested  views.  The  subject  is  a  complex  one,  and  when 
the  law  relevant  thereto  is  finally  settled,  a  number  of  consid- 
erations will  require  to  be  weighed  which  appear  not  to  have 
been  heretofore  considered. 

The  second  view  of  the  law  operates  to  deny  an  appeal  from 
the  Circuit  Court  upon  the  question  of  the  necessity  for  a  dis- 
claimer. If  the  patentee  submits  to  the  condition  imposed 
by  the  chancellor,  and  if,  in  order  to  secure  an  injunction 
and  an  account  on  his  confessedly  valid  claims,  he  disclaims 
the  others,  and  if  the  Supreme  Court,  on  an  appeal  by  the  de- 
fendant, holds  that  no  disclaimer  was  necessary  in  the  case,  it 
will  be  impossible  to  rectify  the  error,  for  there  is  no  way  to 
recall  a  disclaimer. 

The  third  view  is  open  to  the  same  objections  as  the  second, 
but  in  a  diminished  degree  ;  a  degree  diminished,  in  any  par- 
ticular case,  in  the  same  proportion  that  the  value  of  an  in- 
junction, bears  to  the  value  of  an  injunction  and  an  account. 
It  is  also  open  to  the  objection  of  inconsistency,  for  there  is 
probably  no  reason  for  refusing  an  account,  which  does  not 
apply  with  equal  force  to  an  injunction. 

The  fourth  view  seems  still  less  reasonable  than  the  third, 
because  an  account  is  incidental  to  an  injunction,  and  if  no  in- 
junction is  granted,  the  power  to  enter  a  decree  for  an  account 
is  probably  wanting. 


1  Myers     v.    Frame,      8    Blatch.  567,  1882. 

446,    1871  ;    Burdett    v.    Estey,    15  4  Matthews    v.    Spangenberg,    14 

Blatch.    349,    1878  ;    Christman    v.  Fed.  Rep.  350,  1882. 

Bumsey,  17  Blatch.  148,  1879.  6  Aiken  v.  Dolan,  3  Fisher,  207, 

8  Brainard   u.   Cramme,    12  Fed.  1867. 

Rep.  621,  1882.  «  O'Reilly   v.  Morse,  15  Howard, 

*  Tyler  v.  Galloway,  12  Fed.  Rep.  121,  1853. 


14:6  DISCLAIMERS.  [CHAP.  VIII. 

The  first  view  would  probably  be  found  to  be  more  consis- 
tent with  convenience  and  with  justice  than  either  of  the 
others.  Whenever  a  Circuit  Court  decides,  that  while  some 
of  the  claims  of  a  patent  are  valid  and  have  been  infringed, 
others  are  void  and  should  be  disclaimed  ;  that  decision  is 
right  or  it  is  wrong.  If  it  is  wrong,  the  patentee  ought  to 
have  an  opportunity  to  get  it  corrected  by  the  Supreme  Court. 
On  the  other  hand,  if  that  decision  is  right,  it  will  be  either 
obviously  right  or  questionably  right.  If  it  is  obviously  right, 
and  if  the  patentee  insists  on  taking  a  decree  without  filing  a 
disclaimer,  he  will  do  so  at  his  peril ;  for  the  Supreme  Court 
will  probably  hold,  on  the  defendant's  appeal,  that  the  omis- 
sion to  disclaim  was  unreasonable,  and  the  whole  patent  there- 
fore void.  If  the  decision  is  questionably  right ;  that  is  to  say, 
if  there  is  room  for  difference  of  intelligent  opinion  upon  the 
point,  then  the  patentee  ought  not  to  be  forced  to  disclaim  till 
the  Supreme  Court  shall  have  decided  that  question  against 
him.  No  ultimate  injustice  would  result  to  either  litigant, 
were  the  first  of  the  four  courses  adopted  by  the  Circuit 
Courts  ;  whereas  the  adoption  of  either  of  the  others,  involves 
a  denial  of  the  right  of  appeal :  a  right  provided  by  the  statute 
in  all  cases  touching  patents.1 

1  Revised  Statutes,  Section  699. 


CHAPTER  IX. 

REISSUES. 


210.  Beginning  of  the  history  of  re- 
issues. 

211.  First  statute  providing  for  re- 
issues, 1832. 

212.  Reissues  under  the  Patent  Act 
of  1836. 

213.  Amendments  made   in  the  re- 
issue law,  by  the  Patent  Act  of 
1837. 

214.  Reissues  under  the  Patent  Act 
of  1870. 

215.  Reissues    under    the    Revised 
Statutes. 

216.  Subjects  of  reissues. 

217.  The  words  "specification,"  "de- 
fective," and  "  insufficient"  de- 
nned. 

218.  Faults  which  justify  reissues. 

219.  Faults  in  claims  which  justify 
reissues. 

220.  Inadvertence,    accident,    and 
mistake. 

221.  Question  of  the  conclusiveness 
of  the  Commissioner's  decision 
relevant  to  existence  of  reissua- 
ble  faults,  and  relevant  to  the 
existence  of  inadvertence,  acci- 
dent, or  mistake. 

222.  The  question   of  the  last  sec- 
tion discussed  and  supported  in 
the  affirmative. 

223.  The  same   question    discussed 
and  supported  in  the  negative. 

224.  Great  importance  of  the  ques- 
tion. 

225.  The    text    writer's  opinion   of 
the  true  answer. 


226.  The   doctrine  of   the    case  of 
Miller  v.  Brass  Co. 

227.  The  length  of  the  delay  contem- 
plated by  the  doctrine  of  Miller 
v.  Brass  Co. 

228.  Effect  of  delay   in  other  cases 
than  those  of  broadened  claims. 

229.  The    statute    relevant   to    two 
years'  prior  use  or  sale,  has  no 
application  to  reissues  as  such. 

230.  Surrender  of  patent. 

231.  Effect  of   surrender  with,  and 
also  without  reissue. 

232.  Reissues  of   reissued    patents 
and  of  extended  patents,    but 
not    of    expired    'patents,     are 
proper. 

233.  Same  invention. 

234.  Same   invention   does   not  in- 
clude whatever  was  produced  by 
the  patentee  before  the  original 
patent. 

235.  Same   invention    is     not    con- 
fined to  invention  claimed  in 
original. 

236.  Inventions  shown  in  drawings 
and  inventions  shown  in  models. 

237.  Inventions  shown  in  drawings 
only. 

238.  Inventions    shown   in   models 
only. 

239.  "  Where  there  is  neither  model 
nor  drawing." 

240.  New  matter. 

241.  Rule    for  ascertaining    same- 
ness of  invention  ;  and  qualifica- 
tions of  that  rule. 


148 


REISSUES. 


[CHAP.  rx. 


242.  Reissues  must  be  for  same  in- 
vention as  prior  reissues,  and 
also  for  same  invention  as  orig- 
inals. 

243.  Legal  presumption  of  sameness 
of  invention. 

244.  Omission,  as   it  affects   same- 
ness of  invention. 

245.  Reissues  for  sub-combinations. 

246.  Reissues  for  single  devices. 

247.  Reissues  as  affected  by  substi- 
tution of  equivalents. 

248.  Reissues  entitled  to  a  liberal 
construction. 


249.  Reissued  patents  may  be  valid 
as  to  some  claims  while  void 
as  to  others. 

250  Executors,  administrators,  and 
assigns  may  procure  reissues. 

251.  One  of  several  executors  may 
procure  a  reissue. 

252.  Rights   of    assignees  in    reis- 
sues. 

253.  The  rights  of  grantees   in  re- 
issues. 

254.  The   legal    effect    of    reissued 
patents. 


§  210.  IN  1821  James  Grant,  of  Providence,  Rhode 
Island,  received  letters  patent  of  the  United  States  for  an  im- 
proved mode  of  manufacturing  hat  bodies.  In  1825  he  pre- 
sented a  petition  to  Henry  Clay,  Secretary  of  State,  stating 
that  the  specification  of  his  patent  was  defective,  and  praying 
that  his  patent  might  be  cancelled,  and  a  new  and  correct  one 
granted,  embracing  the  same  improvements,  so  far  as  they 
were  set  forth  in  certain  new  specifications,  drawings  and  ex- 
planations which  accompanied  the  petition.  Though  there 
was,  at  that  time,  no  statute  which  authorized  any  such  pro- 
ceeding ;  yet,  on  the  advice  of  William  Wirt,  the  Attorney- 
General,  and  in  the  name  of  John  Quincy  Adams,  the  Presi- 
dent of  the  United  States,  Mr.  Clay  cancelled  the  letters  patent 
of  Mr.  Grant,  and  thereupon  issued  to  him  new  letters  patent, 
for  the  same  invention,  and  for  the  residue  of  the  term  cov- 
ered by  the  original  document.  Annexed  to  the  new  letters, 
and  forming  part  thereof,  were  the  new  specifications,  draw- 
ings and  explanations,  which  had  accompanied  Mr.  Grant's 
petition. 

In  the  case  of  Grant  v.  Raymond  '  the  validity  of  this  pro- 
ceeding was  called  in  question  in  the  Supreme  Court  ;  and  was 
argued  in  the  negative  by  Daniel  Webster.  The  Supreme 
Court  sustained  the  validity  of  the  reissued  patent,  on  the 
general  spirit  and  object  of  the  patent  law  ;  not  on  its  letter. 


1  Grant  v.  Raymond,  6  Peters,  243, 1832. 


CHAP.   IX.]  REISSUES.  149 

In  delivering  the  opinion  Chief  Justice  MARSHALL  said  :  "  If 
the  mistake  should  be  committed  in  the  Department  of  State, 
no  one  would  say  that  it  ought  not  to  be  corrected.  All  would 
admit  that  a  new  patent,  correcting  the  error,  and  which 
would  secure  to  the  patentee  the  benefits  which  the  law  in- 
tended to  secure,  ought  to  be  issued.  And  yet  the  act  does 
not  in  terms  authorize  a  new  patent,  even  in  that  case.  Its 
emanation  is  not  founded  on  the  words  of  the  law,  but  it  is 
indispensably  necessary  to  the  faithful  execution  of  the  solemn 
promise  made  by  the  United  States.  Why  should  not  the 
same  step  be  taken  for  the  same  purpose,  if  the  mistake  has  in- 
nocently been  committed  by  the  inventor  himself  ?"  And  his 
Honor  further  said  :  "If,  by  an  innocent  mistake,  the  instru- 
ment introduced  to  secure  his  privilege  fails  in  its  object,  the 
public  ought  not  to  avail  itself  of  this  mistake,  and  to  appro- 
priate the  discovery  without  paying  the  stipulated  considera- 
tion. The  attempt  would  be  disreputable  in  an  individual, 
and  a  Court  of  Equity  might  interpose  to  restrain  him." 

§  211.  in  accordance  with  the  spirit  of  the  decision  in  Grant 
i).  Raymond,  and  within  a  few  months  after  that  decision  was 
made,  Congress  enacted  a  statute  to  regulate  the  granting  of 
reissued  letters  patent. '  That  statute  provided,  in  effect,  that 
whenever  any  patent  should  be  invalid  or  inoperative,  because 
the  inventor,  by  inadvertence,  accident  or  mistake,  and  with- 
out any  fraudulent  or  deceptive  intention,  failed  to  conform 
his  specification  to  the  then  existing  statutory  requirements  ;  it 
should  be  lawful  for  the  Secretary  of  State,  upon  the  surren- 
der to  him  of  such  patent,  and  the  delivery  to  him  of  a 
sufficient  statutory  specification,  to  cause  a  new  patent  to  be 
granted  to  the  same  inventor,  for  the  same  invention,  and  for 
the  residue  of  the  term  of  the  original  patent.  That  statute 
also  provided  that  the  right  to  receive  a  reissue,  should  extend 
to  executors,  administrators  or  assigns  ;  and  that  the  reissue 
patent  should  be  liable  to  the  same  defences  as  the  original  ; 
and  that  no  public  use  of  the  invention,  after  the  grant  of  the 
original  patent,  should  prejudice  the  right  of  the  patentee  to 

1  4  Statutes  at  Large,  Ch.  162,  Section  3,  p.  559. 


150  KEI88UES.  [CHAP.  rs. 

recover  for  infringement  of  the  reissue  patent,  committed 
after  the  grant  thereof. 

§  212.  The  Patent  Act  of  1836  l  repealed  all  prior  statutes 
relevant  to  patents,  and  provided  a  more  elaborate  system  in 
place  of  the  repealed  laws.  Section  13  of  that  Act  referred 
to  reissues,  and  provided,  in  effect,  that  whenever  any  patent 
should  be  inoperative  or  invalid  because  the  inventor  had,  by 
inadvertence,  accident,  or  mistake,  and  without  any  fraudu- 
lent or  deceptive  intention,  made  his  description  or  specifica- 
tion defective  or  insufficient,  or  had  claimed  in  his  specifica- 
tion more  than  he  had  a  right  to  claim  as  new  ;  it  should  be 
lawful  for  the  Commissioner  of  Patents,  upon  the  surrender 
to  him  of  such  patent,  to  cause  a  new  patent  to  be  issued  to 
the  same  inventor,  for  the  same  invention,  in  accordance  with 
the  inventor's  corrected  description  and  specification,  and  for 
the  residue  of  the  term  of  the  original  patent.  This  statute 
also  provided  that  the  right  to  receive  a  reissue  should  extend 
to  executors,  administrators  and  assigns,  and  that  the  reissued 
patent,  together  with  the  corrected  description  ano^  specifica- 
tion, should  have  the  same  effect  in  law,  on  the  trial  of  all 
actions  thereafter  commenced  for  causes  subsequently  accru- 
ing, as  though  the  same  had  been  originally  filed  in  such  cor- 
rected form  before  the  issuing  of  the  original  patent. 

§  213.  The  Patent  Act  of  1837 a  made  some  additions  to 
the  statute  of  1836,  relevant  to  reissues.  Section  5  recognized 
a  right  in  a  patentee  to  demand  and  receive  several  reissued 
patents  for  distinct  parts  of  the  subject-matter  of  his  surren- 
dered patent.  And  Section  8  provided,  that  whenever  a  pat- 
ent should  be  returned  for  reissue,  the  claims  thereof  should 
be  subject  to  revision  and  restriction,  in  the  same  manner  as 
were  original  applications  for  patents  ;  and  that  the  Commis- 
sioner should  not  grant  any  reissue,  until  the  applicant  should 
have  entered  a  disclaimer,  or  altered  his  claim,  in  accordance 
with  the  decision  of  the  Commissioner  ;  and  that  the  applicant, 
if  dissatisfied  with  such  decision,  should  have  the  same  remedy 


1  5  Statutes  at  Large,  Ch.  357,  p.    *  5  Statutes  at  Large,  Ch.  45,  p. 
117.  191. 


CHAI>.   IX.]  REISSUES.  151 

by  way  of  appeal,  that  the  law  provided  in  cases  of  original  ap- 
plications. 

§  214.  The  Patent  Act  of  1870 l  substantially  re-enacted 
the  law  of  reissues  as  it  had  been  embodied,  for  more  than 
thirty  years,  in  the  statutes  of  1836,  and  1837  ;  but  re- 
enacted  that  law  with  a  few  modifications  and  additions. 
Where  the  old  law  used  the  phrase  "  defective  or  insufficient 
description  or  specification,' '  the  new  law  used  the  words  "  de- 
fective or  insufficient  specification."  Where  the  old  statute 
made  it  lawful  for  the  Commissioner  to  reissue  a  patent,  the 
new  statute  made  it  obligatory  upon  him  to  do  so.  Where 
the  old  law  recognized  a  right  in  a  patentee  to  demand  and  re- 
ceive several  reissue  patents  in  the  place  of  one  surrendered 
patent,  the  new  law  provided  that  the  Commissioner  might, 
in  his  discretion,  cause  several  such  patents  to  be  issued  upon 
the  demand  of  the  applicant.  The  provision  of  the  old 
statute,  that  the  applicant,  if  dissatisfied  with  the  decision  of 
the  Commissioner,  should  have  the  same  remedy  and  be 
entitled  to  the  same  privileges  and  proceedings,  as  were  pro- 
vided by  law  in  the  case  of  original  applications  for  patents, 
was  omitted  in  the  new  statute  ;  but  its  effect  was  retained, 
by  expressly  mentioning  reissues  in  those  sections  of  the  new 
statute,  which  provided  for  that  remedy,  and  for  those  priv- 
ileges and  proceedings.1  Section  33  of  the  new  statute  pro- 
vided further,  that  where  a  patent  was  to  be  reissued  to  an 
assignee  of  the  inventor,  the  application  should  be  made,  and 
the  specification  be  sworn  to,  by  the  inventor,  if  he  be  living. 
The  Patent  Act  of  March  3,  1871, 3  prescribed,  that  the  provi- 
sion of  Section  33,  just  mentioned,  should  not  be  construed  to 
apply  to  any  patent,  issued  and  assigned  before  July  8,  1870  : 
the  date  of  the  approval  of  the  Act  of  which  that  section 
formed  a  part.  Another  new  provision  of  the  Statute  of 
1870,  was  as  follows  :  "  No  new  matter  shall  be  introduced 
into  the  specification,  nor  in  case  of  a  machine  patent  shall 

1  16  Statutes  at  Large,  Ch.  230,  p.       Sections  46  to  52,  p.  204. 
198-  3  16  Statutes  at  Large,  Ch.  132,  p, 

8  16  Statutes   at  Large,  Ch.   230,       583. 


152  EEIS8UE8.  [CHAP.  ix. 

the  model  or  drawings  be  amended,  except  by  each  other  ;  but 
where  there  is  neither  model  nor  drawing,  amendments  may 
be  made  upon  proof  satisfactory  to  the  Commissioner  that 
such  new  matter  or  amendment  was  a  part  of  the  original  in- 
vention, and  was  omitted  from  the  specification  by  inadver- 
tence, accident,  or  mistake,  as  aforesaid. " 

§  215.  Section  4916  of  the  Revised  Statutes  is  substantially 
a  copy  of  Section  53  of  the  Statute  of  1870.  Section  4895  of 
the  Revised  Statutes,  re-enacted  the  provision  above  cited 
from  Section  33  of  the  Act  of  1870,  coupled  with  the  statu- 
tory construction  of  that  provision,  which  was  contained  in 
the  Patent  Act  of  1871,  and  which  was  above  explained.  Sec- 
tions 46  to  52  of  the  Act  of  1870,  were  re-enacted  as  Sections 
4909  to  4915  of  the  Revised  Statutes.  Thus  the  law  of  reis- 
sues underwent  no  change  when  the  Revised  Statutes  were  ap- 
proved. The  reissue  provisions  which  were  embodied  in  the 
Act  of  1870,  are  still  the  statutes  which  govern  the  subject. 

The  meritorious  ground  Jfor  reissues,  as  stated  by  the 
Supreme  Court  in  Grant  v.  Raj'mond,  has  now  been  set  forth  ; 
and  the  subsequently  enacted  and  gradually  developed  statu- 
tory law  on  the  subject  has  been  explained.  To  explore  the 
great  mass  of  relevant  adjudicated  cases,  and  to  extract  from 
those  cases  the  detailed  doctrines  of  the  law  of  reissues,  is  the 
engaging  work  upon  which  it  is  now  in  order  to  enter. 

§  216.  To  be  the  lawful  subject  of  a  reissue,  a  patent  must 
be  invalid,  or  it  must  be  at  least  inoperative.11  All  patents 
that  are  invalid,  are  also  inoperative.  If  the  two  words  had, 
in  the  statutes,  been  always  connected  with  the  word  "  and  ;" 
there  would  be  ground  for  an  argument  that  they  were  used 
synonymously.  In  fact,  however,  they  have  always  been  con 
nected  with  the  word  "  or ;"  thus  indicating  that  they  were 
not  intended  to  signify  the  same  thing.  "What  they  do  re- 
spectively mean,  is  to  be  ascertained  by  considering  other  pro- 
visions of  the  statute  ;  namely  those  provisions  which  indicate 


1  16  Statutes  at  Large,  Ch.  132,       1836,  Section  13  ;    Act  of  1870,  Sec- 
'Section  53,  p.  206.  tion  53 ;  Kevised  Statutes,  Section 

1  Act  of  1832,  Section  3  ;  Act  of      4916. 


CHAP.  IX.]  REISSUES.  153 

the  causes  from  which  either  invalidity  or  inoperativeness  must 
have  sprung,  in  order  to  make  patents  reissuable.  To  have 
that  effect,  either  of  those  faults  must  have  resulted  from  a 
defective  or  insufficient  specification,  or  from  the  patentee 
claiming  more  than  he  had  a  right  to  claim  as  new.  This  last 
cause  of  fault,  was  first  mentioned  in  the.  statute  of  1836.  In 
the  following  year,  Congress  provided  that  patents  should  no 
longer  be  held  to  be  invalid,  on  that  ground,  provided  proper 
disclaimers  were  reasonably  entered.1  Ever  since  1837,  there- 
fore, faults  in  patents,  arising  from  patentees  claiming  more 
than  they  had  a  right  to  claim,  have  been  as  curable  by  dis- 
claimers as  by  reissues  ;  and,  as  the  remedy  by  disclaimer  is 
both  cheaper  and  better  than  the  other,  the  remedy  by  re- 
issue has  seldom  or  never  been  sought  as  a  cure  for  a  fault  of 

o 

that  class.  The  case  law  on  the  subject  of  reissues,  is  there- 
fore substantially  confined  to  reissues  which  were  granted  be- 
cause the  surrendered  patents  were  alleged  to  be  invalid  or  in- 
operative, by  reason  of  defective  or  insufficient  specifications. 

§  217.  The  meaning  of  the  word  "  specification"  is  that  of 
the  words  "  description  and  claim"  when  it  is  used,  in  the  stat- 
utes, separately  from  both  those  words.2  In  the  reissue  sec- 
tion of  the  statute  of  1836,  the  word  "  description"  was  used 
in  connection  with  the  word  "  specification"  and  thus  limited 
the  meaning  of  the  latter  to  the  signification  of  the  word 
"claim."3  On  the  other  hand,  in  the  fourth  sentence  of 
Section  4916  of  the  Revised  Statutes,  the  word  "  specifica- 
tion" is  used  in  immediate  connection  with  the  word  "  claim," 
and  is  therefore  limited,  in  that  place,  to.  the  meaning  of  the 
word  "  description." 

The  word  "  defective"  and  the  word  "  insufficient"  are  not 
synonymous  in  this  statute,  as  at  first  thought  they  may  appear 
to  be.  The  former  word  means  "  bad,"  and  the  latter  means 
"  lacking. "  A  description  may  be  complete,  while  it  is  obscure 
in  some  of  its  parts.  In  such  a  case,  it  is  defective.  On  the 


1  5  Statutes  at  Large,  Ch.  45,  Sec-      1880. 

tions  7  and  9,  p.  193.  3  Wilson  v.  Coon,  18  Blatch.  536, 

8  Wilson  v.  Coon,  18  Blatch.  535,       1880. 


154  BEISSTJES.  [CHAP.  ix. 

• 

other  hand,  it  may  be  perfectly  clear,  as  far  as  it  goes,  while 
omitting  all  reference  to  some  parts  of  the  thing  described. 
In  such  a  case,  it  is  insufficient.  So  also,  a  claim  may  mistily 
cover  the  whole  invention  described,  but  being  liable  to  be 
misunderstood,  it  is  defective.  On  the  other  hand  it  may  be 
entirely  clear,  while  it  is  narrower  than  the  invention,  and 
therefore  insufficient  to  cover  and  secure  the  latter. 

§  218.  From  the  foregoing  it  follows,  that  ever  since  183G, 
those  patents  have  been  reissuable  which  were  invalid  or  in- 
operative, by  reason  of  defective  or  insufficient  descriptions 
or  claims  ;  provided  their  faults  arose  from  inadvertence,  acci- 
dent or  mistake,  and  without  any  fraudulent  or  deceptive  in- 
tention. This  proviso  is  equally  imperative  in  all  cases.  As- 
suming it  to  be  satisfied  in  all,  and  disregarding  the  nugatory 
provisions  relevant  to  reissues  when  the  patentee  has  claimed 
too  much,  it  appears  that  the  faults  which  make  patents  reis- 
suable are  four  in  number.  1.  Invalidity  arising  from  defec- 
tive description.  2.  Invalidity  arising  from  insufficient  de- 
scription. 3.  Invalidity  arising  from  defective  claims.  4. 
Inoperativeness  arising  from  insufficient  claims. 

The  nature  of  the  first  three  of  these  faults,  is  explained  in 
the  chapter  on  letters  patent.  Whether  or  not  a  particular 
patent  was  or  is  invalid  for  either  of  those  reasons,  may  be  de- 
termined, by  the  application  thereto  of  the  relevant  rules  and 
doctrines  set  forth  in  that  chapter.  Specifications  have,  for 
many  years,  been  generally  written  with  such  a  degree  of 
skill  and  care,  that  comparatively  few  letters  patent  have,  in 
recent  times,  been  characterized  by  either  of  the  first  two 
faults.  Those  which  have  possessed  the  third  fault,  have,  in 
many  cases,  been  made  to  possess  it,  in  order  to  deceive  or  de- 
fraud the  public,  and  not  from  inadvertence,  accident  or  mis- 
take. Defective  claims  are  frequently  nebulous  claims,  in- 
tended to  mean  much  or  to  mean  little,  according  to  the  exi- 
gencies of  future  events.  To  the  public,  they  arc  intended  to 
convey  -a  signification  so  wide  as  to  deter  others  than  the^ 
patentee,  from  accomplishing  the  same  result  by  other  means 
than  those  which  the  patentee  is  entitled  to  claim.  To  the 
courts,  they  are  intended  to  convey  a  meaning  so  narrow  as 


CHAP.  IX.]  BEISSUES.  155 

• 

to  enable  them  to  successfully  run  the  gauntlet  of  litigation. 
For  such  purposes  of  duplicity,  nebulously  defective  claims 
are  more  useful  than  clear  and  perfect  ones  would  be.  Those 
who  secure  such  patents,  therefore  seldom  surrender  them  for 
reissue,  except  in  cases  where  the  defect  arose  from  the 
absence  of  verbal  skill,  in  the  writers  of  the  claims,  rather  than 
from  the  presence  of  intent  to  deceive,  in  the  owners  of  the 
patents.  The  considerations  stated  in  this  paragraph,  account 
for  the  well-known  fact,  that  most  of  our  reissued  patents 
were  reissued  because  of  alleged  inoperativeness  arising  from 
alleged  insufficiency  of  claims. 

§  219.  Claims  are  the  only  operative  parts  of  specifications. 
If  an  inventor  has  produced  two  or  more  inventions,  so  allied 
that  they  may  properly  be  secured  to  him  in  one  letters  pat- 
ent ;  and  if  he  fully  describes  all  of  those  inventions  in  the 
descriptive  part  of  his  specification,  but  covers  only  one  of 
them  by  his  claims  ;  then  his  patent  is  operative  as  to  one  of 
those  inventions,  and  inoperative,  as  to  the  others.  Inopera- 
tiveness of  that  kind,  is  sufficient  to  lay  the  foundation  of  a 
right  to  a  reissue.1  Reissues  granted  in  such  cases  are  called 
broadened  reissues.  Though  the  statute  does  not,  under  that 
name,  authorize  reissues  of  that  kind,  they  are  authorized  by 
the  general  terms  of  the  law  ; 3  and  have  been  upheld  by  the 
Supreme  Court  in  many  cases.3 

§  220.  Inadvertence,  accident  or  mistake  must  have  been  the 
source  of  the  fault  in  letters  patent,  in  order  to  make  them  re- 
issuable.4  Such  inadvertence  or  accident  may  have  been  suf- 
fered, or  such  mistake  may  have  been  committed,  by  the 
patentee,  or  by  the  Commissioner  of  Patents.6  The  statute  is 
satisfied  on  this  point,  where  the  patent  was  inoperative  by 


1  Anilin  v.  Higgin,  15  Blatch.  291,  Goodyear,    9    Wallace,    788,    1869  ; 

1878;  Wilson   v.    Coon,   18   Blatch.  Corn-Planter  Patent,  23  Wallace,  217, 

535,  1880.  1374  ;  Marsh  v.  Seymour,  97  U.  S. 

4  Miller  v.  Brass  Co.  104  U.  S.  354,  356,  1877. 

1881.  4  Revised  Statutes,  Section  4916. 

3  Battin  v.  Taggert,    17   Howard,  B  Grant  v.  Raymond,  G  Peters,  218, 

74,    1854  ;    Morey  v.   Lockwood,    8  1832. 
Wallace,  230,  1868  ;  Rubber  Co.  v. 


156  BEISSUES.  [CHAP.  ix. 

• 

reason  of  insufficient  claims,  if  those  claims  were  made  too  few 
or  too  narrow  because  the  patentee  was  mistaken  about  the 
state  of  the  art,1  or  because  the  patentee  or  his  solicitor, 
when  concerting  the  claims,  Inadvertently  failed  to  make 
them  as  extensive  as  the  invention.3  So  also,  the  statute  is 
satisfied,  where  the  patent  was  inoperative  by  reason  of  in- 
sufficient claims,  if .  those  claims  were  made  too  narrow  be- 
cause the  Commissioner,  on  account  of  an  erroneous  opinion 
entertained  by  him,  refused  to  allow  them  to  be  made  as  broad 
as  they  ought  to  have  been  ;  *  or  because  of  an  erroneous  de- 
cision made  by  him  in  an  interference  proceeding.4 

§  221.  The  Supreme  Court  has  recognized  the  fact,  that 
patents  have  been  reissued  by  the  Commissioner,  in  some 
cases  where  there  was  no  statutory  ground  therefor  ;  *  that  is 
to  say,  in  some  cases  where  the  patents  surrendered  were  neither 
invalid  nor  inoperative  ;  or  if  invalid  or  inoperative,  were  not 
so  by  reason  of  a  defective  or  insufficient  specification  ;  or  if 
invalid  or  inoperative  by  reason  of  a  defective  or 'insufficient 
specification,  were  not  so  because  of  inadvertence,  accident  or 
mistake.  It  is,  however,  still  an  unsettled  question  whether 
any  of  these  matters  can  be  investigated  in  courts.  The  point 
is  so  important,  and  involves  so  many  cases  and  considera- 
tions, that  it  deserves  and  must  receive  an  extensive  explana- 
tion in  this  book.  To  that  explanation  it  is  now  convenient  to 
proceed. 

§  222.  It  has  several  times  been  said  by  divers  justices  of 
the  Supreme  Court,  that  the  Commissioner,  when  granting  a 
reissue,  is  presumed  to  have  decided  that  some  statutory 
ground  for  a  reissue  existed  ;  and  that  his  decision,  on  that 
point,  is  not  subject  to  review,  in  any  suit  for  infringement.' 


1  National  Spring  Co.  v.  Mfg.  Co.  6  Burr  v.  Duryee,  1  Wallace,  531. 

12  Blatch.  89, 1874.  18G3  ;  Leggett   v.    Avery,  101   U.  8. 

*  Miller  v.  Brass  Co.  104  U.S.  352,  259,  1879. 

1881.  «  Story,   J.,   in  Philadelphia  and 

3  Morey  v.  Lock-wood,  8  Wallace,  Trenton  Railroad  Co.  v.  Stimpson, 
230,  1868.  14  Peters,   448,  1840 ;   McLean,  J., 

4  American  Shoe-Tip  Co.  v.  Protec-  in  Stimpson  v.  Railroad  Co.  4  How- 
tor  Co.  2  Bann.  &  Ard.  651,  1877.  ard,    404,    1846  ;    Clifford,    J.,    in 


CHAP.  IX.]  BEIS8UE8.  157 

* 

In  the  first  of  these  cases,  the  point  was  not  before  the 
court  for  decision.  The  question  at  bar  was  whether  the  re- 
issued patent  needed  to  contain  any  recitals  of  the  particular 
statutory  faults  on  account  of  which  it  was  granted.  The  de- 
cision on  that  point  was  in  the  negative.  In  stating  the 
grounds  upon  which  that  decision  was  based,  Justice  STORY 
overstepped  the  issue,  and,  when  speaking  of  the  evidence  of 
reissuability  laid  before  the  Commissioner,  remarked  :  "No 
other  tribunal  is  at  liberty  to  re-examine  or  controvert  the 
sufficiency  of  such  proof,  if  laid  before  him,  when  the  law  has 
made  such  officer  the  proper  judge  of  their  sufficiency  and 
competency. " 

In  the  second  case,  the  Supreme  Court  found  a  number  of 
errors  in  the  charge  to  the  jury  which  had  been  given  by  the 
judge  in  the  court  below.  The  first  two  of  those  errors,  had 
no  relevancy  to  the  point  now  under  inspection.  On  that 
point  the  judge  had  told  the  jury  that  the  original  patent  was 
inoperative  and  invalid  by  reason  of  non-compliance  with  the 
requisites  of  the  statute  ;  but  that  the  plaintiff  had  not  made 
out  such  a  case  of  inadvertence,  accident,  or  mistake  as  justi- 
fied a  reissue.  In  delivering  the  opinion  of  the  Supreme 
Court,  Justice  McLEAN  did  not  expressly  characterize  this  part 
of  the  charge  as  erroneous,  as  he  had  expressly  done  relevant 
to  the  first  two  points.  The  following  paragraph  contains 
what  he  said  on  the  subject  : 

"  By  the  thirteenth  section  of  the  Act  of  1836,  ( if  the  pat- 
ent shall  be  inoperative  or  invalid,  by  reason  of  a  defective  or 
insufficient  description  or  specification, '  &c. ,  '  if  the  error  has 
or  shall  have  arisen  by  inadvertency,  accident,  or  mistake,  and 
without  any  fraudulent  or  deceptive  intention,  it  shall  be  law- 
ful '  to  surrender  it,  «fec.  Now,  as  in  granting  the  renewed 
patent,  the  officers  of  the  government  act  under  the  above 
provisions,  their  decision  must  at  least  be  considered  primd 
facie  evidence  that  the  claim  for  a  renewal  was  within  the 


Seymour  v.    Osborne,    11   Wallace,       Strong,   J.,  in   Ball  v.   Langles,  102 
516,  1870  ;  and  in  Collar  Co.  v.  Van      U.  S.  129,  1880. 
Dusen,  23  Wallace,   558,    1874,    and 


158  BEI88UE8.  [CHAP.   IX. 

statute.  But  this  would  not  be  conclusive  against  fraud  in 
the  surrender  and  renewal,  which,  on  the  evidence,  would  be 
a  matter  for  the  jury.  And  we  suppose  that  the  inquiry  in 
regard  to  the  surrender  is  limited  to  the  fairness  of  the  trans- 
action. In  whatever  manner  the  mistake  or  inadvertence 
may  have  occurred  is  immaterial.  The  action  of  the  govern- 
ment in  renewing  the  patent  must  be  considered  as  closing 
this  point,  and  as  leaving  open  for  inquiry,  before  the  court 
and  jury,  the  question  of  fraud  only." 

What  his  Honor  said  about  prima  facie  evidence,  is  un- 
doubtedly the  law  ;  but  what  he  said  about  fraud,  has  since 
been  decided  to  be  incorrect.  It  is  now  settled  that  questions 
of  fraud,  in*obtaining  reissues,  cannot  be  raised  in  any  infringe- 
ment suit. ' 

In  the  third  case  cited,  the  defendant  did  claim,  in  its  an- 
swer, that  the  reissued  letters  patent  were  void,  because  no 
evidence  was  produced  before  the  Commissioner,  to  show  that 
the  originals  were  inoperative  or  invalid.  The  defendant, 
however,  introduced  no  proof  to  support  that  statement  of  his 
pleading,  and  the  point  was,  for  that  reason,  necessarily  over- 
ruled. The  case  furnished  no  means  of  reviewing  the  Com- 
missioner's decision,  and  therefore  there  was  no  occasion  for 
the  court  to  decide  whether  it  was,  in  law,  reviewable.  Jus- 
tice CLIFFORD  however  proceeded  to  say,  that :  "  Where  the 
Commissioner  accepts  a  surrender  of  an  original  patent  and 
grants  a  new  patent,  his  decision  in  the  premises,  in  a  suit  for 
infringement,  is  final  and  conclusive,  and  is  not  re-examinable 
in  such  a  suit  in  the  Circuit  Court,  unless  it  is  apparent  upon 
the  face  of  the  patent  that  he  has  exceeded  his  authority,  that 
there  is  such  a  repugnancy  between  the  old  and  the  new  pat- 
ent that  it  must  be  held,  as  matter  of  legal  construction,  that 
the  new  patent  is  not  for  the  same  invention  as  that  embraced 
and  secured  in  the  original  patent."  Battin  v.  Taggert  and 
O'  Reilly  v.  Morse  were  cited  by  Justice  CLIFFORD  to  support 
the  foregoing  obiter  dictum.  There  was,  however,  no  such 
question  decided  in  either  of  those  cases.  In  Battin  v.  Tag- 

1  Eureka  Co.  v.  Bailey  Co.  11  Wallace,  492, 1870. 


CHAP.   IX.]  REISSUES.  159 

gert,  Justice  McLfiAN  casually  remarked  that  in  Stimpson  v. 
Railroad  Co.  it  was  held  ' '  that  the  proceeding  before  the 
Commissioner,  in  the  surrender  and  reissue  of  a  patent,  is  not 
open  for  investigation,  except  on  ground  of  fraud."  In 
O'Reilly  v.  Morse,  the  question  was  raised  by  the  defendant 
whether  Morse's  reissued  patent  was  not  void  because  his  sur- 
rendered patent  was  neither  inoperative  nor  invalid.  The  court 
decided  that  the  reissued  patent  was  not  void,  but  in  so  de- 
ciding the  court  did  not  explain  whether  it  agreed  in  opinion 
with  the  Commissioner  touching  the  invalidity  or  inoperative- 
ness  of  the  surrendered  patent,  or  whether  it  found  itself  with- 
out power  to  review  his  decision  on  that  point. 

In  the  case  of  Collar  Co.  v.  Van  Dusen,  the  question  was, 
whether  the  reissued  patent  and  the  surrendered  patent  were 
for  the  same  invention.  That  question  was  readily  and  rightly 
decided  in  the  negative,  and  the  patent  therefore  held  void. 
But  Justice  CLIFFORD  said  in  passing  :  "  Unless,  however, 
it  is  apparent  upon  the  face  of  the  new  patent  that  the  Com- 
missioner has  exceeded  his  authority,  his  decision  is  final  and 
conclusive,  as  the  jurisdiction  to  reissue  patents  is  vested  in 
him  subject  to  a  single  exception,  that  if  there  is  such  repug- 
nancy between  the  old  and  the  new  patent  that  it  must  be  held, 
as  matter  of  legal  construction,  that  the  reissued  patent  is  not 
for  the  same  invention  as  that  embraced  and  secured  in  the 
original  patent,  then  the  reissued  patent  is  invalid." 

In  the  case  of  Ball  v.  Langles  the  question  .was  also  whether 
the  surrendered  patent  and  the  reissued  patent  were  for  the 
game  invention.  Here  also  that  question  was  quickly  decided 
in  the  negative  and  the  patent  held  void.  But  Justice  STRONG 
also  said  in  an  obiter  dictum  that :  "  The  commissioner  was 
invested  with  authority  to  determine  whether  the  surrendered 
patent  was  invalid  by  reason  of  a  defective  or  insufficient  spec- 
ification, or  because  the  patentee  had  claimed  more  than  he 
had  a  right  to  claim  as  new  ;  and  if  he  found  such  to  be  the 
case,  and  found  also  that  the  error  had  been  due  to  inadver- 
tence, accident,  or  mistake,  without  fraud,  his  decision  was  con- 
clusive, and  not  subject  to  review  by  the  courts." 

In  accordance  with  the  obiter  dicta  of  the  Supreme  Court, 


160  EEI88UE8.  [CHAP.  IX. 

in  the  five  cases  thus  reviewed,  the  same  doctrine  has  been 
announced  in  other  obiter  dicta  by  Circuit  Courts  in  many 
cases  ;  and  in  a  few  Circuit  Court  cases  it  has  been  judicially 
decided  to  be  law.1 

§  223.  But  the  other  side  of  the  question,  stated  in  Section 
221  of  this  book,  is  also  supported  by  several  obiter  dicta  of 
the  Supreme  Court,  and  by  several  strong  arguments  in  deci- 
sions of  several  of  the  Circuit  Courts. 

In  Burr  v.  Duryee,"  Justice  GRIEK  said,  that  the  patentee, 
in  his  original  patent,  claimed  all  he  had  a  right  to  claim,  and 
claimed  no  more  ;  and  that  there  was  no  error  from  inadver- 
tences, accident  or  mistake.  Now  these  statements  of  fact, 
were  contrary  to  the  decision  of  the  Commissioner,  which  was 
involved  in  his  having  reissued  that  patent.  In  this  instance, 
therefore,  the  Supreme  Court  did  in  fact  review  that  decision, 
and  did  in  fact  pronounce  it  wrong. 

In  Goodyear  v.  Rubber  Co.,3  Justice  S WAYNE  said  that, 
"  The  surrender  was  made  by  the  executor,  for  the  reason  that 
the  specification  was  defective  and  required  amendment. 
This  the  law  permitted,  if  the  facts  brought  the  case  within 
the  provisions  of  the  statute.  The  Commissioner  was  charged 
with  the  duty  of  examining  the  facts  and  deciding  upon  the 
application.  His  judgment  is  shown  in  the  result.  Upon 
comparing  the  context  of  the  specifications  of  the  surrendered 
and  reissued  patent,  and  giving  to  each  a  reasonable  interpre- 
tation, we  are  satisfied  that  the  decision  was  correct,  and  we 
see  no  reason  to  reverse  it."  This  therefore  was  an  instance 
in  which  the  Supreme  Court  appears  to  have  reviewed  the  de- 
cision of  the  Commissioner  relevant  to  the  defective  character 
of  the  specification  of  the  original  patent,  and  to  have  pro- 
nounced that  decision  to  be  right.  In  saying  that  they  saw 
no  reason  to  reverse  it,  they  implied  that  they  had  jurisdic- 
tion to  reverse  it,  had  any  such  reason  been  seen. 


1  Smith  v.  Merriam,  6  Fed.  Hep.  1863. 

713, 1881 ;  Selden  v.  Gas  Burner  Co.  3  Rubber  Co.  v.  Goodyear,  9  Wal- 

9  Fed.  Rep.  390,  1881.  lace,  795,  1869 

4  Burr  v.  Duryee,  1  Wallace,  571. 


CHAP.  IX.]  BEISSUES.  161 

In  James  v.  Campbell,1  Justice  BRADLEY  said  that, 
"  Where  it  is  apparent  on  the  face  of  the  patent,  or  by  con- 
temporary records,  that  no  such  inadvertence,  accident,  or 
mistake,  as  claimed  in  a  reissue  of  it,  could  have  occurred,  an 
expansion  of  the  claim  cannot  be  allowed  or  sustained. ' '  This 
is  a  declaration  that  courts  will  review  and  reverse  the  decision 
of  the  Commissioner,  on  the  question  of  the  existence  of  inad- 
vertence, accident,  or  mistake,  in  certain  cases  where  certain 
kinds  of  documentary  evidence  shows  that  decision  to  have 
been  wrong. 

In  Whitely  v.  Swayne,"  Judge  LEAVITT  decided  that  the 
original  patent  was  not  inoperative  or  invalid  by  reason  of  a 
defective  or  insufficient  specification  ;  and  that  the  reissues 
were  therefore  not  granted  in  accordance  with  the  statute  ; 
and  that  when  the  statutory  requirements  relevant  to  reissues 
are  not  complied  with,  it  is  within  the  power  of  the  court  and 
its  plain  duty  to  hold  the  reissue  void. 

In  Wicks  v.  Stevens,3  Justice  BRADLEY,  when  sitting  in  the 
Circuit  Court  for  the  Eastern  District  of  Texas,  decided  that 
neither  inadvertence,  accident,  nor  mistake,  did  in  fact  cause 
the  particular  omission,  in  the  claim  of  the  original  patent, 
which  the  claim  of  the  reissued  patent  supplied  ;  and  that 
therefore  the  latter  claim  could  not  be  sustained. 

In  Giant  Powder  Co.  v.  Vigorit  Powder  Co.,4  Justice 
FIELD,  when  sitting  in  the  Circuit  Court  for  the  District  of 
California,  delivered  a  long  opinion  upon  this  subject.  The 
substance  of  that  opinion  appears  to  be,  that  the  Commis- 
sioner has  no  jurisdiction  to  reissue  any  patent,  unless  the 
original  was  chargeable  with  some  of  the  faults  which,  ac- 
cording to  the  statute,  make  patents  reissuable  ;  and  that^if 
an  original  patent  shows  on  its  face,  that  it  did  not  have  either 
of  those  faults,  it  is  the  duty  of  the  court  to  hold  any  reissue 
thereof  to  be  void. 


1  James  v.  Campbell,  104  U.  S.  3  Wicks  v.  Stevens,  2  Bann.  & 

371,  1881.  Ard.  318,  1876. 

a  Whitely  v.  Swayne,  4  Fisher,  ]23,  4  Giant  Powder  Co.  v.  Vigorit 

1865.  Powder  Co.  G' Sawyer,  508, 1880. 


162  REISSUES.  [CHAP.  IX. 

In  Flower  v.  Rayner,1  Judge  NIXON  decided  that  where  an 
original  patent  shows  upon  its  face,  that  no  statutory  ground 
for  a  reissue  existed  therein,  any  reissue  of  that  patent  is  void, 
because  unauthorized  by  law  ;  and  that,  though  the  decision  of 
the  Commissioner  on  this  point  is  presumed  to  be  correct,  yet 
the  courts  are  not  obliged  to  accept  it  as  final. 

In  Searls  v.  Bouton,"  Judge  WHEELER  entered  a  final  de- 
cree adjudging,  among  other  things,  that  original  letters  pat- 
ent No.  150,195  was  not  inoperative  or  invalid  by  reason  of  a 
defective  or  insufficient  specification,  and  that  the  Commis- 
sioner had  no  jurisdiction  to  accept  the  surrender  of  said  orig- 
inal letters  patent,  and  to  grant  reissue  No.  9297  thereon  ;  and 
that  said  reissue  was  therefore  void. 

§  224.  Great  interests  are  involved  in  the  question  stated  in 
Section  221  and  discussed  in  Sections  222  and  223.  So  many 
patents  have  doubtless  been  reissued  in  cases  where  the  orig- 
inals were  not  in  fact  reissuable,  that  many  hardships  will 
surely  follow  the  settlement  of  the  law  upon  the  point,  and 
whether  it  is  settled  for  or  against  the  finality  of  the  Commis- 
sioner's decision.  If  settled  for  that  finality,  the  public  will 
have  to  pay  tribute  in  a  class  of  cases,  relevant  to  which  it  has 
never  consented  thus  to  be  taxed  :  will  have  to  submit  to  a 
class  of  patents  which  have  no  deeper  foundation  than  the  will 
of  the  Commissioner  of  Patents.  If  the  question  is  finally  set- 
tled against  the  finality  of  the  Commissioner's  decision,  many 
meritorious  inventors  will  have  been  misled  by  the  obiter  dicta 
of  Justices  STORY,  McLEAN,  CLIFFORD,  and  STRONG  into  sur- 
rendering their  valid  patents,  and  receiving  for  them  nothing 
but  worthless  parchment.  In  view  of  this  dilemma,  it  was  a 
misfortune  that  the  Supreme  Court  did  not  decide  the 
question,  when  it  arose  in  the  case  of  O'  Reilly  v.  Morse.  A 
single  sentence  of  decision  in  that  case,  would  have  obviated 
pages  of  dicta  which  have  since  been  scattered  through  many 
others,  and  would  have  authoritatively  guided  the  citizens 
upon  a  point  which  no  amount  of  dicta  can  settle. 

'  Flower  v.  Eayner,  5  Fed.  Eep.  »  Searls  v.  Bouton,  12  Fed.  Eep. 
793,  1881.  626,  1881. 


CHAP.   IX.]  REISSUES.  163 

§  225.  To  the  present  text  writer,  the  question  stated  in 
Section  221  appears  to  admit  of  a  plain  and  unassailable  an- 
swer ;  and  that  answer  is  the  following.  The  decision  of  the 
Commissioner  relevant  to  the  existence  of  a  statutory  ground 
for  a  reissue,  is  not  conclusive  in  any  court  ;  because  he  has 
no  jurisdiction  to  grant  any  reissue  in  the  absence  of  such  a 
statutory  ground  ;  and  because  the  statute  does  not  make  him 
the  final  judge  of  his  own  jurisdiction. 

§  226.  Miller  v.  Brass  Co.1  is  a  celebrated  case,  which  in- 
troduced a  new  doctrine  into  the  patent  laws  of  the  United 
States.  That  doctrine  is  precisely  this.  The  right  to  obtain 
a  broadened  reissue,  is  lost  by  a  long  lapse  of  time,  after  the 
date  of  the  original,  and  before  the  application  for  that  reissue. 
If  that  doctrine  has  any  prototype  in  any  prior  deliverance  of 
any  United  States  judge,  that  prototype  must  be  found  in  a 
charge  which  Chief  Justice  TANEY  delivered  to  a  jury  some- 
what early  in  his  judicial  career.3  In  that  case,  the  third  par- 
agraph of  his  Honor's  instruction  was  as  follows  :  "  The 
plaintiff,  at  the  time  of  his  application  for  the  patent  of  1834, 
had  a  right  to  surrender  the  patent  of  1829,  and  take  out  a. 
corrected  one,  if  the  said  patent  was  invalid,  either  by  reason 
of  the  defective  description  of  the  improvement,  or  by  reason 
of  his  having  claimed,  as  new,  more  than  he  was  entitled  to  ; 
provided,  the  error  had  arisen  from  inadvertence  or  mistake, 
and  the  plaintiff  proceeded  to  correct  it  within  a  reasonable 
time  after  it  was  discovered."  The  last  proviso  of  this  in- 
struction, differs  from  the  doctrine  of  Miller  v.  Brass  Co.,  in 
that,  the  latter  makes  the  fatal  lapse  of  time  to  begin  at  the 
date  of  the  original  patent,  whereas  the  former  makes  it  to 
begin  when  the  fault  of  the  original  patent  is  discovered. 
This  difference  is  a  substantial  one  ;  because  reissuable  faults  in 
letters  patent  are  often,  and  perhaps  generally,  of  such  a 
character  that  they  can  be  detected  only  by  persons  learned  in 
the  patent  law  ;  and  because  a  patentee  may  honestly  keep 
his  patent  by  him  for  years,  without  subjecting  it  to  profes- 

1  Miller  u.  Brass  Co.  104  U.  S.  350,  '  Knight  v.  Railroad  Co.  Taney's 
1881.  Circuit  Court  Decisions,  107,  1840. 


164:  REISSUES.  [CHAP.  ix. 

sional  scrutiny.  The  doctrine  of  Miller  v.  Brass  Co. ,  must 
therefore  find  its  foundation  and  genesis  elsewhere  than  in  the 
opinion  of  Chief  Justice  TANEY  ;  and  elsewhere  than  in  any 
United  States  decision  made  and  reported  before  that  doctrine 
was  promulgated  in  that  case  in  January,  1882. ' 

§  227.  The  length  to  which  delay  must  be  drawn  out,  in 
order  to  lose  the  right  to  apply  for  a  broadened  reissue,  is  as 
yet  unknown.  No  clearer  light  can,  at  present,  be  thrown 
upon  that  inquiry,  than  can  be  thrown  by  stating  the  various 
spaces  of  time,  which  in  various  cases,  have  already  been 
found  long  enough  to  be  fatal.  In  Miller  v.  Brass  Co.  itself, 
the  delay  continued  for  fifteen  years.  In  three  later  Supreme 
Court  cases,  the  delay  was  for  fifteen,  fourteen,  and  thirteen 
years,  respectively.1  In  each  of  two  cases  on  the  circuit,  the 
delay  was  thirteen  years  ;  *  and  in  another,  it  was  ten  years  ;  * 
and  two  others,  it  was  nine  years  ; B  and  in  another,  it  was  five 
years  ; 8  and  in  one  it  was  only  twenty  months  ; 7  and  in  all 
of  them  it  was  held  to  have  been  long  enough  to  lose  the 
right  to  a  broadened  reissue,  and  therefore  to  have  made  void 
the  broadened  claims  of  the  respective  reissues  at  bar. 

§  228.  Reissued  patents  sought  for  and  granted  for  other 
faults  than  insufficient  claims,  will  perhaps  hereafter  be  sub- 
jected to  a  doctrine  of  delay.  If  so,  more  delay  will  probably 
be  required  to  kill  such  patents,  than  is  required  to  kill  a 
broadened  claim,  for  it  was  said  in  Miller  v.  Brass  Co.  that 
the  correction  of  a  patent,  by  means  of  a  reissue,  where  it  is 
invalid  or  inoperative  for  want  of  a  full  and  clear  description 
of  the  invention,  cannot  be  attended  with  such  injurious  re- 
sults, as  follow  from  the  enlargement  of  a  claim  ;  and  hence  a 

1  Battin  v.   Taggert,  17  Howard,          *  Sheriff  v.  Fulton,  12  Fed.  Kep. 

85,  1854.  137,  1882. 

*  Johnson  v.    Railroad    Co.    105          6  Hayes    v.  Seton,    12  Fed.  Eep. 

U.  8.  539,    1881  ;  Matthews  v.    Ma-  123,  1882  ;   Holt  v.  Keeler,  13  Fed. 

chine  Co.  105  U.  S.  54, 1881  ;  Bantz  Bep.  464,  1882. 
v.  Frantz,  105  U.  S.  160,  1881.  •  Streit  v.  Lawter,  11   Fed.   Hep. 

3  Combined  Patents  Can  Co.    v.  309,  1882. 

Lloyd,  11  Fed.  Kep.  149,  1882  ;  New-          '  New  v.  Warren,  22  Off.  Gaz.  588 

ton   v.  Mfg.  Co.   14  Fed.   Kep.   470,  1882. 
1882. 


CIIAP.  IX.]  REISSUES.  165 

reissue  may  be  proper  in  such  cases,  though  a  longer  period 
has  elapsed  since  the  issue  of  the  original  patent. 

§  229.  The  statutory  provision  which  makes  a  patent  void, 
if  the  invention  it  covers  was  in  public  use  or  on  sale  more 
than  two  years  before  that  patent  was  applied  for,  is  a  matter 
which  does  not  apply  to  reissued  patents,  and  the  applications 
therefor.1  The  reissue  application  is  considered  as  appended 
to  the  original  application,2  and  the  two  years  ceases  to  run 
with  the  tiling  of  the  latter. 

§  230.  A  surrender  of  a  patent,  when  made  with  an  appli- 
cation for  a  reissue,  need  not  be  made  in  writing  ;  and  there- 
fore the  statement  in  a  reissue  that  it  is  a  reissue  of  a  surren- 
dered former  reissue,  is  not  negatived  by  the  production  of  a 
document  purporting  to  be  a  surrender  of  the  original  patent, 
and  apparently  intended  to  have  been  a  surrender  of  the  for- 
mer reissue. s  The  presumption  that  the  proper  patent  was 
surrendered,  by  parol  if  not  otherwise,  is  not  negatived  by 
proof  of  an  ineffectual  attempt  to  surrender  it  in  writing. 

§  231.  Patents  surrendered  prior  to  July  8,  1870,  were 
thereby  cancelled  in  law,  whether  a  reissue  was  granted  there- 
on or  not.4  Patents  surrendered  since  July  8,  1870,  were 
also  cancelled  thereby  if  reissues  were  granted  thereon,  but 
not  otherwise.5  No  damages  or  profits  can  ordinarily  be  re- 
covered, for  any  infringement  of  a  surrendered  patent  com- 
mitted prior  to  its  cancellation,  by  means  of  any  judgment  or 
decree  entered  after  that  time  ;  but  money  recovered  or  volun- 
tarily paid,  on  account  of  such  infringement,  prior  to  such  can- 
cellation, cannot  be  recovered  back.6  Nor  will  any  such  can- 
cellation have  any  effect  upon  any  unpaid  judgment  or  decree 
which  was  entered  before  that  cancellation  took  effect.  The 
right  of  the  patentee,  in  such  a  case,  rests  upon  his  judgment 


1  Shaw  v.  Lead  Co.  11  Fed.  Rep.  1863  ;  Peck  v.  Collins,  103  U.  S.  664, 

714,  1882.  1880. 

*  Grant  v.  Raymond,  6  Peters,  218,  &  16  Statutes  at  Large,    Ch.    132, 

1832.  Section  53,  p.  206  ;  Revised  Statutes, 

8  Dental  Vulcanite  Co.  v.  Wether-  Section  4916. 

bee,  2  Clif.  563,  1866.  «  Moffitt  v.   Garr,    1   Black.  273, 

4  Moffitt   v.  Garr,   1    Black.  273,  1861. 


166  REISSUES.  [CHAP.  ix. 

or  decree,  and  not  on  his  patent.1  The  decision  just  cited,  is 
a  decision  of  the  Supreme  Court,  delivered  by  Justice  STRONG, 
but  it  was  never  inserted  in  the  Supreme  Court  reports. 

The  only  exception,  yet  established,  to  what  the  last  para- 
graph states  is  the  ordinary  rule  relevant  to  profits  and  dam- 
ages which  accrued  from  the  infringement  of  a  surrendered 
patent  before  its  cancellation,  was  established  in  a  case  where 
the  defendant  infringer  was  himself  the  patentee,  and  where 
the  plaintiffs  were  his  equitable  grantees,  as  to  that  part  of 
the  territory  of  the  United  States,  included  writhin  the  boun- 
daries of  Connecticut  and  New  York.  In  that  case,  the  pat- 
entee infringed  his  grantee's  rights,  and  afterward  surren- 
dered and  reissued  the  patents  involved.  The  Supreme  Court 
decided  that  the  defendant  held  his  patents,  all  the  time  in 
trust  for  the  plaintiffs,  to  the  extent  of  their  territory  ;  and 
that  he  must  therefore  account  to  them  for  the  profits  which 
he  had  made  from  the  use  of  the  trust  property,  within  that 
territory,  regardless  of  the  fact  that  he  had  surrendered  and 
reissued  those  patents,  after  making  a  part  of  those  profits.2 

§  232.  A  reissued  patent  may  be  surrendered  and  again  re- 
issued, under  the  same  circumstances  as  those  which  make  an 
original  patent  reissuable.3  So  also,  a  patent  might  be  reis- 
sued during  its  extended  term,  as  well  as  during  its  first  term, 
when,  as  formerly,  extensions  of  patents  were  provided  for 
by  law.4  But  patents  reissued  during  their  respective  ex- 
tended terms  will  be  more  likely  to  suffer  from  the  doctrine 
of  Miller  v.  Brass  Co.5  than  those  reissued  during  their  first 
terms,  because  of  the  generally  longer  lapse  of  time  after  the 
dates  of  the  originals.  No  reissue  can  be  granted  of  a  patent 
after  its  final  expiration  ;  even  where  that  expiration  resulted 
from  the  fact  that  the  same  invention  had  been  patented  in  a 
foreign  country  before  it  was  patented  in  the  United  States  ; 

1  Mevs  v.   Conover,  11   Off.    Gaz.  Fed.  Rep  390,  1881. 

1111,  1876.  <  Wilson  v.  Roussean,  4  Howard, 

1  Littlefield  u.  Perry,  21  Wallace,  646, 1846  ;  Gibson  u.  Harris,  1  Blatch. 

205,  1874.  167.  1846. 

3  French  v.  Rogers,  1  Fisher,  136,  »  Miller  v.   Brass  Co.    104  U.   8. 

1851  ;    Selden  v.  Gas  Burner  Co.  9  350,  1881. 


CHAP.  IX.]  REISSUES.  167 

and  from  the  fact  that  the  foreign  patent  has  expired,  though 
the  United  States  patent  sought  to  be  reissued,  does  not  ap- 
pear, on  its  face,  to  have  done  so.1 

§  233.  Only  "  the  same  invention"  can  be  covered  by  a  re- 
issued patent.2  This  quoted  phrase  occurs,  in  this  relation, 
in  all  the  relevant  statutory  provisions,  now  or  heretofore  in 
force  in  the  United  States.  But  neither  of  those  statutes  ob- 
viously indicates  whether  the  phrase  refers  to  whatever  inven- 
tion was  made  by  the  patentee,  and  actually  described  in  his 
original  application  ;  or  refers  to  whatever  invention  was  sub- 
stantially suggested,  indicated  or  described  in  the  patentee's 
original  letters  patent,  drawing  or  model  ;  or  refers  to  whatever 
invention  was  described  or  indicated  in  the  original  letters  patent 
or  drawing  of  the  patentee  ;  or  refers  to  whatever  invention 
was  described  by  him  in  his  original  letters  patent  ;  orrefers 
only  to  whatever  invention  was  actually  claimed  by  him  in 
that  original  document.  Information  on  this  subject,  is  how- 
ever to  be  had  in  the  decisions  of  the  courts.  As  the 
question  is  almost  as  complex  as  it  is  important,  and  as  the  ad- 
judged cases,  and  judicial  obiter  dicta,  which  bear  upon  it, 
lack  something  of  harmony  ;  it  is  necessary  in  this  place  to 
engage  in  an  extensive  search  among  the  precedents,  and  in  a 
careful  comparison  of  conflicting  arguments  and  opinions. 

§  234.  To  show  that  a  given  invention  was  actually  made  by 
a  patentee,  before  applying  for  his  original  patent,  and  was 
intended  by  him  to  be  incorporated  into  that  patent  ;  is  not 
enough  to  entitle  the  patentee  to  such  a  reissue  of  the  pat- 
ent, as  will  cover  that  invention.*  In  the  case  cited,  Alfred 
Nobel  appeared  to  be  the  inventor  of  several  processes  and 
compositions  of  matter,  useful  in  the  business  of  blasting. 
His  original  application  for  a  patent  described  and  claimed 
mixtures  of  gunpowder,  and  of  gun-cotton,  and  of  rocket 
powder,  with  nitro-glycerine  ;  and  described  and  claimed  sev- 


1  C  W.  Siemens'  Appeal,  11  Off.  ent  Act  of  1870,  Section  53  ;  Revised 

Gaz.  1107,  1877.  Statutes,  Section  4916. 

8  Patent  Act  of  1832,  Section  3 ;  s  Powder  Co.  v.  Powder  Works, 

Patent  Act  of  1836..  Section  13  ;  Pat-  98  U.  S.  126,  1878. 


168  REISSUES.  {CHAP.  ix. 

eral  processes  for  exploding  pure  nitre-glycerine.  This  appli- 
cation was  amended  by  Nobel's  solicitor,  in  such  a  way  as  to 
eliminate  the  mixtures,  and  confine  it  to  the  processes  ;  and  on 
the  specification  so  amended  a  patent  was  granted.  That  pat- 
ent was  surrendered  and  reissued  in  four  divisions  ;  the  last 
being  for  the  mixtures  described  and  claimed  in  the  original 
application,  but  not  mentioned  in  the  specifications  of  the 
original  letters  patent.  This  last  divisional  patent  was  in 
its  turn  surrendered  and  reissued  in  two  subdivisions,  one 
being  for  the  mixture  of  gunpowder  with  nitro-glycerine,  and 
the  other  being  for  the  mixture  of  rocket-powder  with  nitro- 
glycerine. It  was  not  denied  that  these  two  patents  were  for 
the  same  inventions  that  were  covered  by  the  reissued  pat- 
ent upon  the  surrender  of  which  they  were  granted  ;  but  it 
was  claimed,  by  the  defendant,  that  the  inventions  covered  by 
them  were  unlike  any  inventions  described  or  claimed  in  the 
original  patent.  To  this  the  complainant  argued  in  confes- 
sion and  avoidance,  claiming  that  the  inventions  covered  by 
the  last  two  reissues,  were  invented  by  Nobel,  and  were  de- 
scribed and  claimed  in  the  original  application,  and  that  reis- 
sues can  lawfully  be  granted  for  the  same  inventions  so  de- 
scribed, whether  they  are  described  in  the  specification  of  the 
original  letters  patent  or  not.  The  Supreme  Court  decided 
the  case  against  the  complainant,  holding  that  reissues  can 
only  be  granted  for  the  same  inventions  that  formed  the 
subject-matter  of  the  original  patents  ;  and  that  the  statute 
does  not  give  any  inventor  a  right  to  amend  his  patent,  by 
the  addition  of  other  inventions,  which  though  they  might  be 
his,  had  not  been  inserted  in  the  application  for  his  original 
patent,  or  if  so  inserted,  had  been  eliminated  therefrom. 

In  a  still  later  case  evidence  tending  to  show  that  the  pat- 
entee, before  obtaining  his  original  patent,  had  invented 
everything  covered  by  the  reissue,  was  held  to  be  immate- 
rial.1 

§  235.  The  claims  of  a  reissue  need  not  to  be  confined  to 
the  invention  actually  claimed  in  the  original ;  for  it  has  been 

1  Mfg.  Co.  v.  Ladd,  102  U.  8.  413,  1880. 


CHAP.   IX.]  REISSUES.  169 

expressly  decided  by  the  Supreme  Court,  that  a  patentee  may 
in  a  reissue  include  in  his  claims  whatever  was  described  in 
the  specification  of  his  original  letters  patent.1  In  the  case 
just  cited,  and  also  in  an  earlier  Supreme  Court  opinion,2  de- 
livered by  the  same  justice  of  that  tribunal,  doctrine  much 
broader  than  this  was  stated  in  obiter  dicta.  In  that  earlier 
opinion  Justice  CLIFFORD  remarked,  that  :  "  Power  is  unques- 
tionably conferred  upon  the  commissioner  to  allow  the  speci- 
fication to  be  amended  if  the  patent  is  inoperative  or  invalid, 
and  in  that  event  to  issue  the  patent  in  proper  form  ;  and  he 
may,  doubtless,  under  that  authority,  allow  the  patentee  to 
redescribe  his  invention  and  to  include  in  the  description  and 
claims  of  the  patent  not  only  what  was  well  described  before 
but  whatever  else  was  suggested  or  substantially  indicated  in 
the  specification  or  drawings,  which  properly  belonged  to  the 
invention  as  actually  made  and  perfected."  In  Marsh  v.  Sey- 
mour, Justice  CLIFFORD  repeated  this  obiter  dictum,  but  re- 
peated it  with  an  interpolation.  He  inserted  after  the  word 
''drawings"  the  words  "or  patent  office  model."  The  still 
later  case  of  Powder  Co.  v.  Powder  Works 8  settled  the  inac- 
curacy of  the  last  clause  of  the  former  dictum. 

§  236.  But  the  Supreme  Court  has  never  really  decided 
whether  an  invention,  shown  only  in  the  drawings  of  an  orig- 
inal patent  ;  or  an  invention  shown  only  in  the  original  Pat- 
ent Office  model,  may  be  covered  by  the  claims  of  a  reissue. 
Those  two  questions  are  very  important  ones.  They  have  no 
necessary  connection  with  each  other.  One  may  be  decided 
in  the  affirmative  and  the  other  in  the  negative,  without  vio- 
lence to  any  statute,  or  to  the  symmetry  of  the  patent  system. 
Upon  few  questions  in  the  patent  law  do  the  books  contain  so 
much  obiter  dicta  as  upon  these  ;  but  disregarding  all  such 
extrajudicial  utterances,  let  attention  now  be  paid  to  those 
statutes  and  decisions  which  bear  upon  the  two  questions  re- 
spectively. 


1  Marsh  v.  Seymour,  97  U.  S.  356,       516,  1870. 

1877.  3  Powder   Co.  v.    Powder  Works, 

s  Seymour  v.  Osborne,  11  Wallace,       98  U.  S.  126,  1878. 


170  KEISSUES.  [CHAP.  ix. 

§  237.  The  statute  provides  that  where  the  nature  of  the 
case  admits  of  drawings,  the  applicant  for  letters  patent  shall 
furnish  one  copy,  which  shall  be  tiled  in  the  Patent  Office, 
and  that  a  copy  thereof  shall  be  attached  to  the  patent,  as  a 
part  of  the  specification.1  The  drawings  of  all  letters  patent, 
issued  since  1871,  and  containing  drawings,  are  published 
in  the  Official  Gazette  of  the  Patent  Office,  by  means  of  exact 
photolithographic  reproductions  ;  and  are  similarly  published 
in  the  certified  copies  of  specifications  and  drawings  of  letters 
patents,  which  are  distributed  among  the  States,  and  among  the 
Federal  courts.*  There  seems  therefore  to  be  no  reason  why 
a  claim  in  a  reissued  patent,  may  not  as  properly  be  based 
upon  a  representation  in  a  drawing,  as  on  a  description  in  a 
specification.  Several  Circuit  Courts  have  accordingly  decided 
the  question  in  that  way,  in  cases  where  the  fate  of  the  suit  de- 
pended upon  that  decision.3  Judge  H.  B.  BROWN  has,  in- 
deed, decided  the  point  the  other  way,4  but  he  did  not  sup- 
port that  decision  by  any  citation  of  authorities  bearing 
directly  upon  the  question,  nor  by  any  necessary  logical  de- 
duction from  the  cases  which  he  did  cite. 

§  238.  It  is  probable  that  no  reissue  claim  was  ever  sus- 
tained in  any  case  where  the  thing  covered  by  it  was  neither 
referred  to  in  the  original  specification,  nor  indicated  in  the 
original  drawing,  and  was  shown  only  in  the  original  Patent 
Office  model.  The  present  text  writer  has  made  careful 
search  through  the  reports,  and  has  never  found  any  report  of 
such  a  case  ;  though  he  has  found  two  cases  in  which  the 
original  model  was  considered  in  aid  of  the  original  specifica- 
tion ;  *  and  has  found  one  where  the  model  was  spoken  of  as 
agreeing  with  the  drawings  in  showing  the  device  in  contro- 
versy ;  *  and  has  found  several  which  contain  obiter  dicta  to 


1   Revised  Statutes,  Section  4889.  4  Kells  v.  McKenzie,  9  Fed.  Rep. 

9  Revised  Statutes,  Section  490.  284,  1881. 

3  Bantz  v.  Elsas,  1   Bann.  &  Ard.  s  Aultman  v.  Holley,    11  Blatch. 

351,   1874  ;  Kerosene  Lamp  Heater  317,    1873  ;    Reissner   v.   Anness,  3 

Co.  v.  Littell,  3  Bann.  &  Ard.   312,  Bann.  &  Ard.  148,  1877. 

1878  ;    Atwood  v.   Portland  Co.  10  «  Calkins  v.  Bertraud,  2  Bann.  8r 

Fed.  Rep.  286,  1880.  Ard.  215,  1875. 


CHAP.   IX.]  REISSUES.  171 

the  effect  that  original  models  are  proper  foundations  for  reis- 
sued claims.  Such  passing  remarks  were,  however,  founded 
upon  other  obiter  dicta,  if  founded  upon  anything,  and  are 
therefore  of  no  more  weight  than  the  reasons  which  underlie 
them.  The  question  whether  a  reissue  claim  can  be  based 
wholly  on  a  Patent  Office  model,  is  therefore  an  open  one  ; 
and  it  is  proper  in  this  place  to  state  the  arguments  that  may 
be  considered,  when  it  is  finally  decided.  Those  arguments 
appear  to  fall  naturally  into  the  following  classification. 

FIRST  :  It  is  an  established  rule  of  patent  law,  that  where 
the  court  is  able  to  say  from  a  comparison  of  an  original  and  a 
reissued  patent,  what  are  the  inventions  described  in  each, 
then  the  question  of  identity  is  one  of  pure  construction,  and 
consequently  is  matter  of  law  for  the  court,  without  any  aux- 
iliary matter  to  be  passed  upon  by  the  jury,  if  the  action  be 
at  law.1  This  rule  is  inconsistent  with  the  idea  that  a  valid 
reissued  claim  may  be  based  on  a  thing  shown  only  in  the  orig- 
inal model  ;  because  the  question  as  to  what  a  model  does  or 
does  not  contain,  is  a  pure  question  of  fact.  If  reissued 
claims  could  be  sustained  on  original  models  alone,  the 
opinion  of  the  court  on  the  question  of  sameness  of  invention 
would  never  be  conclusive  in  any  case  where  a  model  was 
originally  deposited  in  the  Patent  Office.  In  that  event, 
there  would  still  be  an  auxiliary  matter  of  fact  to  be  passed 
upon  by  the  jury  ;  no  matter  how  plainly  the  original  and  re- 
issued specifications  appeared,  on  their  face,  to  be  for  different 
inventions  ;  and  no  matter  how  exempt  both  specifications 
might  be  from  terms  of  art  calling  for  expert  explanation. 

SECOND  :  The  original  model  is  furnished  to  the  Commis- 
sioner of  Patents  ;  *  and  becomes  the  property  of  the  United 
States.  It  is  not  allowed  to  be  taken  from  the  Patent  Office 
except  in  the  custody  of  some  sworn  employe,  specially  author- 
ized by  the  Commissioner,  with  the  written  approval  of  the 
Secretary  of  the  Interior.3  No  court  could  compel  its  pro- 
duction therein,  against  the  will  of  the  authorities  of  the  Pat- 

1  Heald  v.  Rice,  104  U.  S.  737,  *  Revised  Statutes.  Section  4891. 
1881.  a  Patent  Office  Rule  59. 


172  BEISSUES.  [CHAP.  ix. 

ent  Office.  If  Congress  had  intended  that  reissue  claims  should 
be  sustained  on  models  alone,  it  would  therefore  have  made 
some  provision  for  proving  those  models  by  certified  copies. 
So  far  from  doing  so,  Congress  has  always  omitted  models 
from  the  lists  of  things,  belonging  to  the  Patent  Office,  which 
according  to  the  statutes  are  thus  provable.1  Certified  copies 
of  models  have  sometimes  been  made  by  the  Commissioner, 
and  used  in  evidence  by  consent ;  but  no  such  copy  was  ever 
admitted  against  the  objection  of  counsel ;  or  if  so  admitted, 
it  was  admitted  without  authority  of  law.  If  reissue  claims 
could  be  based  on  original  models,  therefore,  it  would  seldom 
be  possible  for  a  defendant  to  technically  prove  that  such  a 
patent  was  for  a  different  invention  from  any  shown  in  such  a 
model.  The  practical  operation  of  such  a  rule,  would  be  to 
make  the  Commissioner's  decision  conclusive  on  the  question 
of  sameness  of  invention,  in  many  cases  where  an  original  model 
was  filed,  unless  the  patentee  should  please,  by  waiving  all 
objections,  to  submit  that  question  to  the  courts.  It  would 
often  be  in  the  power  of  one  party  to  an  action  to  take  away 
from  the  courts  a  power  which  undoubtedly  belongs  to  them  ; 
the  power  to  pass  upon  the  validity  of  reissue  patents,  as 
against  an  objection  of  want  of  sameness  of  invention  with 
the  originals. 

THIRD  :  The  public  has  ample  opportunity  of  learning  all 
the  contents  of  drawings  and  specifications,  by  means  of  the 
copies  which  are  contained  in  the  widely  distributed  Patent 
Office  Gazette,  or  of  the  printed  certified  copies  which  are  to  be 
found  in  every  State  capitol,  and  in  many  other  places,  or  of 
the  complete  uncertified  printed  copies  which  are  purchasable 
from  the  Commissioner  of  Patents  for  about  ten  cents  each. 
But  no  person  has  any  reliable  means  of  learning  the  charac- 
teristics of  the  Patent  Office  models,  except  that  of  going 
to  the  Patent  Office  to  inspect  them,  or  sending  an  agent 
thither  for  that  purpose.  Indeed  eighty-seven  thousand 


1  Patent  Act  of  1836,  Sec.  4  ;  Pat-      Sec.  57  ;  Revised  Statutes,    Section 
ent  Act  of  1837,  Sec.  2  ;  Patent  Act      892. 
of  1861,  Sec.  15  ;  Patent  Act  of  1870, 


CHAP.  IX.]  REISSUES.       .  173 

of  those  original  models  no  longer  exist,  having  been  de- 
stroyed in  the  Patent  Office  fire  of  1877.  To  allow  a  reissue 
claim  on  a  model  alone,  would  operate  as  a  surprise  iipon  per- 
sons who  had  no  actual  notice,  and  no  fair  constructive  notice, 
of  the  contents  of  that  model.  It  is  true  that  such  persons 
would  not  be  liable  to  any  action  for  accrued  profits  or  dam- 
ages, on  account  of  having  made  used  or  sold  the  subject- 
matter  of  such  a  reissue  claim  before  it  was  granted  ;  but  they 
would  be  liable  to  an  injunction,  restraining  them  from  future 
making,  using  or  selling  of  specimens  of  that  thing,  though  it 
was  not  covered  by  any  patent,  or  otherwise  published,  till 
after  they  had  perhaps  embarked  their  capital  in  machinery  for 
making  such  specimens,  or  in  such  specimens  themselves. 

FOURTH  :  To  allow  reissued  claims  to  be  based  on  models 
alone,  would  be  to  give  an  extensive  opportunity  to  fraud. 
Specifications  or  drawings  can  never  be  surreptitiously 
changed  without  leaving  ample  means  for  certain  detection. 
Thousands  of  exact  copies  thereof  are  made  before  the  letters 
patent  are  issued  ;  and  before  the  letters  patent  reach  the 
patentees,  hundreds  of  those  copies  are  being  transported  in 
the  mails  throughout  the  United  States.  Patent  Office 
models,  on  the  contrary,  are  never  duplicated,  except  in  spe- 
cial cases  ;  and  it  is  not  practicable  for  the  Commissioner  to 
keep  them  in  such  close  custody  as  to  insure  against  fraudu- 
lent changes  being  made  in  their  parts,  or  in  the  arrange- 
ment of  those  parts. 

FIFTH  :  On  the  other  side  of  the  question,  it  can  truly  be 
said,  that  the  original  model  is  sometimes  more  likely  to  be  a 
perfect  representation  of  the  inventor's  actual  invention,  than 
either  the  specification  or  the  drawings.  The  answer  to  that 
suggestion  is,  that  such  is  not  always  the  fact,  and  that  even 
if  it  were  so,  reissues  are  not  granted  for  everything  the  in- 
ventor actually  invented,  and  intended  to  patent.1  They 
ought  to  be  grantable  only  for  those  inventions,  of  the  exist- 
ence of  which  the"  inventor  gave  the  public  fair  notice  when 
he  filed  his  original  application  ;  and  fair  notice  of  an  inven- 

1  Powder  Co.  v.  Powder  Works,  98  U.  S.  126,  1878. 


174  REISSUES.  [CHAP.  DC. 

tion  cannot  be  given  to  fifty  millions  of  people,  by  simply  de- 
positing a  model  in  the  Patent  Office  at  Washington,  where,  if 
it  is  not  destroyed  by  fire,  it  is  likely  to  be  broken  by  acci- 
dent or  altered  by  dishonesty. 

§  239.  The  last  clause  of  Section  4916,  of  the  Revised  Stat- 
utes, provides,  that  "  when  there  is  neither  model  nor  draw- 
ing, amendments  may  be  made  upon  proof  satisfactory  to  the 
Commissioner  that  such  new  matter  or  amendment  was  a 
part  of  the  original  invention,  and  was  omitted  'from  the 
specification  by  inadvertence,  accident,  or  mistake."  The 
meaning  of  that  clause  is  not  perfectly  known  ;  but  it  is  known 
not  to  enlarge  the  power  of  the  Commissioner,  in  reference  to 
the  invention  for  which  a  reissue  may  be  granted.  That 
power  is  still  restricted  to  the  same  invention  that  was 
originally  patented.1  That  is  to  say,  it  is  restricted  to  the 
same  invention  which  was  originally  made  manifest  to  the 
public  in  the  specifications  or  drawings  of  the  original  letters 
patent. 

§  240.  The  provision,  first  enacted  in  1870,9  that  "  no 
new  matter  shall  be  introduced  into  the  specification"  is 
merely  another  way  of  saying  that  a  reissued  patent  shall  be 
for  the  same  invention  as  the  original.3  That  provision, 
therefore,  neither  enlarged  nor  restricted  the  reissuability  of 
letters  patent  ;  and,  accordingly,  it  is  not  new  matter,  within 
its  meaning,  to  state  a  new  use  of  the  invention  shown  in  the 
original  ; 4  nor  to  explain,  in  a  reissue,  the  operation  of  a  de- 
vice which  in  the  original  was  only  described  ; 6  nor  to  vary 
the  description  of  anything  described  in  the  original ; '  nor 
to  claim  anything  which  was  described  in  the  original  specifi- 
cation,7 or  shown  in  the  original  drawings.8 

1  Powder  Co.    v.  Powder  Works,  &  Ard.  243,   1876  ;    Potter  v.  Stew- 

98  U.  S.  138,  1878.  art,  18  Blatch.  661,  1881. 

4  16  Statutes  at  Large,    Ch.    230,  6  O'Reilly  v.  Morse,    15  Howard, 

Section  53,  p.  206.  62,  1853. 

8  Powder  Co.  v.  Powder  Works,  '  Rubber  Co.  v.  Goodyear,  9  Wal- 

98  U.  8.  138,  1878.  lace,  788,  1869  ;  Powder  Co.  v.  Pow- 

4  Broadnax  v.  Transit  Co.  5  Bann.  der  Works,  98  U.  S.  136,  1878. 

&  Ard.  611,  1880.  8  Bantz  v.  Elsas,  1  Bann.  &  Ard. 

*  Putnam  v.  Yerrington,  2  Bann.  351,    1874  ;   Kerosene  Lamp  Heater 


CHAP.   IX.]  REISSUES.  175 

§  241.  The  rule,  that  whatever  was  described  or  shown  in 
an  original  specification  or  drawing,  may  be  claimed  in  a  re- 
issue, is  qualified  by  another  rule,  which  provides  that  if  the 
thing  in  question  was  disclaimed  in  the  original,  it  cannot  be 
claimed  in  any  reissue  thereof. '  Not  only  express  disclaimers, 
but  also  disclaimers  which  are  implied  by  the  law,  operate  to 
foreclose  a  reissue  for  the  thing  disclaimed.  Where,  for  in- 
stance, a  specification  states  that  a  certain  described  device  is 
in  common  use,  no  reissue  claim  can  lawfully  be  allowed  for 
that  device  ;  *  or  where  a  specification  described  a  contrivance 
which  it  characterizes  as  old  and  faulty,  that  contrivance  can- 
not be  made  the  subject  of  a  valid  reissue  claim.3 

§  842.  Reissued  patents,  which  were  granted  on  the  sur- 
render of  former  reissues,  must  be  able  to  endure  comparison, 
on  the  point  of  identity  of  invention,  not  only  with  the  orig- 
inal letters  patent,  but  also  with  the  surrendered  reissues, 
which  preceded  them.4, 

§  243.  There  is  a  legal  presumption  that  the  necessary  iden- 
tity of  invention  exists  in  all  reissued  patents  ;  and  that  pre- 
sumption controls  the  point,  unless  the  contrary  is  shown  to  be 
true."  That  can  be  done  only  by  introducing  the  original  let- 
ters patent  in  evidence  ; '  and  by  showing  the  court,  from  a 
comparison  of  the  original  specification  and  drawings,  with  the 
description  and  claims  of  the  reissue,  that  the  former  do  not 
embody  what  is  described  and  claimed  in  the  latter.7  If,  on 
comparing  a  reissue  with  its  original,  the  former  appears  on  its 
face  to  be  for  a  different  invention  from  any  described  or  in- 
dicated in  the  latter,  that  reissue  is  void.8 

§  244.  To  omit  from  a  reissue,  anything  which  the  original 

Co.  v.  Littell,  3  Bann.  &  Ard.   312,  Circuit  Court  Decisions,  106,  1840. 
1878;  Atwood  u.  Portland  Co.  10  Fed.  8  O'Reilly  v.  Morse,  15  Howard, 

Kep.  286,  1880.  62,  1853  ;  Klein  v.  Kussell,  19  Wal- 

1  Leggett  v.  Avery,  101  U.  S.  256,  lace,  433,  1873. 
1879.  «  Seymour  v.  Osborne,  11  Wallace, 

1  Edgarton  v.   Mfg.    Co.   9    Fed.  516,  1870. 

Eep.  451,  1881.  .   '  Smith  v.  Dental  Vulcanite  Co. 

3  Streit   v.  Lauter,   11  Fed.  Rep.  93  U.  S.  499,  1876. 

309,  1882.  8  Ball  v.  Langles,  102  U.  S.   130, 

4  Knight  v.  Railroad  Co.  Taney's       1880. 


176  REISSUES.  [CHAP.  ix. 

specification  stated  to  be  essential  to  the  invention,  is  fatal  to 
identity  of  invention.1  Indeed,  it  has  been  held  in  one  case 
that  the  omission  of  one  bolt  from  a  reissue  patent  for  a  reaper 
and  mower,  was  enough  to  negative  identity  with  the  original, 
because  with  the  bolt,  the  machine  was  a  reaper  only,  and  not 
a  mower.8  A  process  consisting  of  one  stage,  is  not  the  same 
invention  as  a  process  consisting  of  that  stage  and  one  or 
more  others.'  Where,  however,  an  original  patent  described 
and  claimed  several  different  inventions,  one  or  more  of  those 
inventions  may  be  omitted  from  the  claims  of  a  reissue  of  that 
patent.4  It  is  necessary  to  the  requisite  identity  of  invention, 
that  the  reissue  should  claim  no  invention  not  described  or 
shown  in  the  original  ;  but  it  is  not  necessary  to  that  identity, 
that  the  original  should  describe  or  claim  no  invention  not  de- 
scribed or  shown  in  the  reissue. 

§  245.  A  sub-combination  may  be  claimed  in  a  reissue,  if 
it  was  shown  in  the  original  as  performing  the  same  func- 
tion ;  even  though  it  was  claimed  in  the  original  only  as  a 
part  of  a  larger  combination.5  But  a  sub-combination  cannot 
be  legally  claimed  in  a  reissue,  if  it  is  there  shown  to  perform 
a  substantially  different  function  from  any  which  it  could 
perform  in  its  original  environment.8  In  the  former  case  the 
invention,  consisting  of  the  sub -combination,  existed  in  the 
original  specification.  In  the  latter  case,  the  sub- combination 
may  have  existed  in  the  original,  but  it  did  not  compose,  in 
that  place,  the  same  invention  which  it  constitutes  in  the  re- 
issue. 

1  Gill    v.   Wells,    22   Wallace,    1,  Wallace,  181,  1874  ;  Jordan  v.  Dob- 
1874  ;    Russell   v.   Dodge,    93   U.  S.  son,  4  Fisher,  232,  1870  ;  Pearl    v. 
460,  1876  ;  Atwood  v.  Portland  Co.  Ocean  Mills,    2  Bann.  &  Ard.    469, 
10  Fed.  Eep.  286,  1880.  1877  ;  Hen-ing  v.  Nelson,  3  Bann.  <fc 

2  Kirby  v.  Mfg.  Co.  10  Blatch.  307,  Ard.  55,  1877  ;  Kerosene  Lamp  Heat- 
1872.  er  Co.  v.  Littell,  3  Bann.  &  Ard.  312, 

a  Wood-Paper  Patent,  23  Wallace,  1878  ;  Turrell   v.  Spaeth,  3  Bann.  & 

599,  1874.  Ard.  461,  1878. 

*  Rubber  Co.  v.  Goodyear,  9  Wai-          «   Gill  v.  Wells,    22   Wallace,    24, 
1«  ce,  788,  1869.  1874  ;  Johnson  v.  Railroad  Co.  105 

*  Battin  v.   Taggert,  17  Howard,  U.  S.  539,  1881. 
74,   1854  ;  Corn-Planter  Patent,   23 


CHAP.  IX.]  BEISSUES.  177 

§  246.  A  single  device  may  also  be  made  the  subject  of  a 
separate  claim  in  a  reissue,  though  in  the  original  it  was 
claimed  only  in  combination  with  other  devices  ;  provided 
that  device  was  a  new  and  useful  invention  of  the  patentee, 
and  might  have  been  separately  claimed  by  him  in  the  original 
patent.1 

§  247.  Whether  a  patentee,  in  effecting  a  reissue,  may  strike 
out  from  the  original  specification,  the  description  of  one  of 
the  ingredients  of  the  patented  combination,  and  may  insert, 
as  a  substitute  therefor,  in  the  new  specification,  the  descrip- 
tion of  an  equivalent  for  the  omitted  ingredient,  is  an  unset- 
tled question.  That  he  may  do  so,  has  been  denied  by  Jus- 
tice CLIFFORD  in  an  obiter  dictum*  but  in  point  of  principle 
the  question  seems  to  call  for  an  affirmative  answer  ;  because 
two  combinations  are  identical  in  the  eye  of  the  patent  law, 
not  only  where  they  contain  the  same  number  and  the  same 
arrangement  of  the  same  parts,  but  also  where  one  of  those 
combinations  omits  some  of  the  parts  of  the  other,  and  substi- 
tutes equivalents  for  the  parts  omitted.3 

§  248.  Reissue  patents  are  not  to  be  held  void  for  want  of 
identity  with  the  originals,  where  a  liberal  construction  of  the 
two  documents  can  avoid  that  result.4  Courts  are  accord- 
ingly inclined,  where  claims  apparently  too  broad  are  inserted 
in  reissue  patents,  to  narrow  those  claims  by  construction,  in 
order  to  make  them  conform  to  the  inventions  shown  in  the 
original  patents.5  This  inclination  is  not  sufficient,  how- 
ever, to  be  relied  upon,  in  a  case  where  a  patent  was  surren- 
dered and  reissued  solely  to  broaden  its  claim,  and  where  the 
broadened  claim  is  clearly  void  for  want  of  novelty,  as  well  as 
for  want  of  identity  with  the  original  invention.6 

§  249.   Where  some,  but  not  all,  of  the  claims  of  a  reissue 

1    Gallahne      v.     Butterfield,     10  4  Milligan  &  Higgins  Glue  Co.  «. 

Blatch.  237,  1872.  •   Upton,  1  Bann.  &  Ard.  505,  1874. 

*  GUI  v.  Wells,    22  Wallace,    30,  8  Mfg.    Co.  v.   Ladd,   102  U.    a 

1874.  412,  1880  ;  Brainard  v.  Gramme,  12 

8  Seymour  v.  Osborne,  11  Wallace,  Fed.  Rep.  624,  1882. 
516,  1870  ;  Gould  v.  Eees,  15  Wai-          6  Wisner  v.    Grant,    7   Fed.  Rep. 

lace,  187,  1872.  922,  1880. 


178  REISSUES.  [CHAP.  ix. 

patent  are  void,  because  they  are  obnoxious  to  the  doctrine  of 
Miller  v.  Brass  Co. ,  or  because  they  are  not  for  the  same  in- 
vention as  the  original  ;  that  fact  does  not  vitiate  the  other 
claims  of  that  patent.  The  reissue  will,  in  either  of  those 
cases,  have  whatever  validity  it  would  have  had  if  it  had  not 
contained  the  invalid  claims.1 

§  250.  Executors,  administrators  or  assigns  have  the  same 
right  to  surrender  and  reissue  a  patent,  that  the  patentee  him- 
self has  ; a  except  that  in  the  case  of  assigns  of  patents  which 
were  assigned  by  the  patentee  after  July  8,  1870,  the  applica- 
tion must  be  made,  and  the  new  specification  be  signed,  by 
the  inventor  himself  if  living.3  The  exemption  from  this 
law,  of  all  patents  granted  and  assigned  before  July  8,  1870, 
is  not  to  be  found  in  the  Patent  Act  of  that  date.  It  was  first 
enacted  March  3,  1 871  ; 4  but  it  expressly  applied,  by  retroac- 
tive operation,  to  all  reissues  of  the  kind,  that  were  granted 
between  July  8,  1870,  and  March  3,  1871.  Of  course,  it  ap- 
plies by  prospective  operation,  to  all  reissues  of  the  kind 
granted  since  the  latter  date.  In  cases  where  the  patent  was 
granted  and  assigned  by  the  patentee,  before  July  8,  1870, 
the  inventor  need  take  no  part  in  the  application  for  a  reissue, 
even  though  the  applicant  received  his  assignment  from  an  in- 
termediate owner  after  that  day.6  It  however  always  was, 
and  still  is,  proper  for  the  patentee  to  make  the  application 
for  a  reissue,  instead  of  his  assignees  doing  so  ;  provided  it  be 
done  with  the  knowledge  and  consent  of  the  latter,  or  pro- 
vided the  latter  ratifies  the  application,  after  it  is  made.' 
The  title  to  the  reissued  patent  will,  in  such  a  case,  vest  at 
once  in  the  assignee,  by  operation  of  the  assignment  of  the 
original  patent,  and  without  the  execution  of  any  new  docu- 
ment.' 

1  Gage  v.  Herring.  107  U.  S.  640,  583. 

1882  ;  Gould  v.  Spicer,  15  Fed.  Hep.  &  Selden  v.  Gas-Burner  Co.  9  Fed. 

344,    1882  ;  Cote   v.  Moffitt,  15   Fed.  Rep.  390,  1881. 

Eep.  345,  1882  ;  Schillinger  v.  Brew-  6  Dental  Vulcanite  Co.  v.  Wether- 
ing  Co.,  24  Off.  Gaz.  495,  1883.  bee,  2  Clif.  563,  1866  ;  Wing  v.  War- 

9  Revised  Statutes,  Section  4916.  ren,  5  Fisher,  548,  1872. 

3  Revised  Statutes,  Section  4895.  '    Woodworth    v.    Hall,    1  Wood- 

4  16  Statutes  at  Large,  Ch.  132,  p.  bury  and  Minot,  248,  389,  1846  ;  Me- 


CHAP.  IX.]  BEISSTJES.  179 

§  251.  Where  several  executors  are  appointed  in  a  will  but 
only  one  of  them  receives  letters  testamentary,  a  patent  of  the 
testator  may  be  lawfully  reissued  to  that  executor,  and  the 
legal  title  to  the  reissued  patent  will  thereupon  vest  exclusive- 
ly in  him. '  A  grant  of  a  reissue  to  a  person  as  administra- 
tor, is  conclusive  evidence  in  an  infringement  suit  that  the 
person  was  in  fact  administrator  ; a  and  the  same  rule  doubt- 
less applies  as  well  to  executors.  A  reissue  to  a  person  in  trust 
for  the  heirs  at  law  of  the  patentee,  will  confer  the  legal  title 
to  the  reissue  upon  that  person,  and  the  equitable  title  upon 
the  persons  beneficially  interested,  whoever  they  may  be.3 

§  252.  An  assignee  of  a  patent  is  a  person  to  whom  the  en- 
tire legal  interest,  or  an  undivided  part  of  the  entire  legal  in- 
terest, in  a  patent,  has  been  duly  assigned  by  an  instrument  in 
writing.  A  grantee  differs  from  an  assignee,  in  that  the 
rights  conveyed  to  him,  are  confined  to  a. part,  or  to  parts  of 
the  territory  of  the  United  States.  A  licensee  is  one  who  re- 
ceives either  an  exclusive  or  a  concurrent  right  to  make  or  to 
use  or  to  sell  the  thing  covered  by  the  patent.4  A  reissue 
may  be  granted  to  an  assignee  of  the  executor  or  administrator 
of  the  patentee  ;  5  or  to  an  assignee  of  an  assignee  ; 6  or  in- 
deed to  an  assignee  of  any  degree,  however  far  removed  from 
the  original  patentee  by  mesne  assignments  ;  '  and  if  the  re- 
issued patent  recites  those  assignments  it  becomes  at  least 
prima  facie  evidence  thereof,  in  an  infringement  suit.8  If 
a  patent  is  owned  jointly  by  two  or  more  patentees,  or  by  two 
or  more  assignees,  or  by  one  or  more  patentees  and  one  or 


Burney   v.    Goodyear,    11    Gushing  4  Sections  274,  287,  and  296  of  this 

(Mass.),  569,  1853.  book. 

1  Kubber  Co.  v.  Goodyear,  9  Wai-  5  Carew  v.  Fabric  Co.  1  Holmes, 

lace,  788,  1869.  45,  1871. 

*  Woodworth  v.  Hall,  1  Woodbury  6  Swift  v.  Whisen,  2   Bond,  115, 

&  Minot,  248,  389,  1846  ;  Goodyear  1867. 

v.  Hullihen,  3  Fisher,  251,  1867.  '  Selden  v.  Gas-Burner  Co.  9  Fed. 

3   Woodworth  v.  Stone,    3   Story,  Kep.  390,  1881. 

752,  1845  ;    Northwestern   Fire   Ex-  8  Middletown  Tool  Co.  v.  Judd,  3 

tinguisher  Co.  v.  Philadelphia  Fire  Fisher,    141,    1867  ;     Hoffheins    u. 

Extinguisher   Co.    1   Bann.    &  Ard.  Brandt,  3  Fisher,  218,  1867. 
177,  1874. 


180  REISSUES.  [CHAP.  ix. 

more  assignees,  all  the  owners  must  join  in  a  reissue,  or  must 
ratify  it,  or  it  will  be  void  ;  but  neither  grantees  nor  licensees 
are  required  to  do  either.1  The  right  of  a  patentee  or  as- 
signee to  receive  a  reissue  is  not  affected  by  his  having  made 
grants,  or  issued  licenses  under  his  patent  ; "  but  where  a  pat- 
entee grants  away  his  rights  in  a  part  of  the  territory  of  the 
United  States,  and  afterward  conveys  the  residue  to  another 
vendee,  it  is  doubtful  whether  that  vendee  is  entitled  to  apply 
for  a  reissue.8 

§  253.  Grantees  may  continue  to  hold  their  rights  under  an 
original  patent  after  it  is  surrendered  and  reissued  by  the  pat- 
entee or  assignee  ;  or  they  may  take  corresponding  rights  un- 
der the  reissued  patent.  They  have  their  choice  between  the 
two.4  It  follows  from  this  rule,  that  in  theory  at  least,  a 
given  invention  may  be  the  subject  of  letters  patent  in  one 
part  of  the  United  States,  at  the  same  time  that  it  is  free  to 
the  public  in  other  parts  of  the  country.  If  this  were  a  prac- 
tical result,  it  would  be  highly  unjust,  because  it  would  oper- 
ate to  prohibit  given  manufactures  in  one  State,  while  in  an- 
other State  the  same  pursuits  would  be  free  to  all.  In  fact  how- 
ever, patentees  or  assignees  seldom  surrender  any  claims  which 
it  is  worth  while  for  any  interested  person  to  retain  ;  and,  on 
the  other  hand,  grantees  are  generally  ready  to  ratify  and 
adopt  broadened  reissues.  It  may  hereafter  happen,  that  in 
order  to  retain  his  rights  of  action  for  accrued  damages  or 
profits,  or  in  order  to  avoid  the  risk  of  exchanging  a  valid 
original  patent  for  a  reissue  patent  of  uncertain  validity,  now 
and  then  a  grantee  will  elect  to  continue  to  hold  under  the 
original,  while  the  patentee  holds  under  a  reissue  patent.  If 
such  cases  become  numerous  and  important  they  will  probably 
lead  to  a  change  of  the  statute.  The  remedy  would  be  to 
prohibit  reissues  of  original  patents  relevant  to  which  any  as- 

1  Potter  v.  Holland,  4  Blatch.  206,  s   Commissioner    of    Patents     v. 

1858  ;  Forbes  v.  Stove  Co.    2  Clif.  Whiteley,  4  Wallace,  522,  1866. 

379,  1864  ;  Meyer  v.  Bailey,  2  Bann.  4  Washburn   v.    Gould,    3   Story, 

A  Ard.  73,  1875.  122,  1844  ;  Woodworth  v.  Stone,    3 

9  Smith  v.  Mercer,  3  Penn.  L.  J.  Story,  749,  1845  ;  Potter  v.  Holland, 

Beports,  529,  1846.  4  Blatch.  206,  1858. 


CHAP.   IX.]  EEIS8UE8.  181 

signraent  or  grant  shall  have  been  made,  or  to  enact  that  in 
such  cases,  all  the  assignees  and  grantees  shall  join  in  the  sur- 
render. 

§  254.  The  legal  effect  of  a  valid  reissue  patent  has  always 
been  the  same,  under  the  different  statutes,  which  have  from 
time  to  time  been  in  force.  The  phraseology  of  the  Act  of 
1832  in  this  respect  was  as  follows  .  "  Such  new  patent,  so 
granted,  shall,  in  all  respects,  be  liable  to  the  same  matters  of 
objection  and  defence  as  any  original  patent.  But  no  public 
use  or  privilege  of  the  invention  so  patented,  derived  from  or 
after  the  grant  of  the  original  patent,  either  under  any  special 
license  of  the  inventor,  or  without  the  consent  of  the  patentee 
that  there  shall  be  a  free  public  use  thereof,  shall,  in  any  man- 
ner, prejudice  his  right  of  recovery  for  any  use  or  violation  of 
his  invention  after  the  grant  of  such  new  patent  as  afore- 
said." '  The  language  of  the  Act  of  1836  on  this  point  was 
as  follows  :  "  The  patent,  so  reissued,  together  with  the  cor- 
rected description  and  specification,  shall  have  the  same 
effect  and  operation  in  law,  on  the  trial  of  all  actions  hereafter 
commenced  for  causes  subsequently  accruing,  as  though  the 
same  had  been  originally  filed  in  such  corrected  form." 

It  follows  from  these  provisions,  that  reissued  patents  can- 
not be  affected,  in  point  of  novelty,  by  anything  done  after  the 
date  of  the  original  application.  Novelty  still  dates  from  the 
original  invention.3  Nor  will  any  invention  produced  after 
that  time,  be  taken  into  account  as  showing  the  state  of  the 
art,  and  therefore  as  being  relevant  to  the  question  of  construc- 
tion of  the  reissued  patents.4  On  the  other  hand,  when  reis- 
sued patents  are  introduced  in  evidence  to  negative  the  novelty 
or  limit  the  scope  of  other  patents,  they  operate  as  of  their  own 
date,  and  not  as  of  the  date  of  the  originals.6 

It  follows  also  from  the  foregoing  statutory  provisions,  that 
persons  who  use  or  sell,  after  the  date  of  a  reissued  patent, 

1  4  Statutes  at  Large,  Ch.  162,  Sec-  1832. 

tion  3,  p.  559.  *  Carroll  v.  Morse,  9  Off.  Gaz.  453, 

*  5  Statutes  at  Large,  Ch.  357,  Sec-  1876. 

tion  13,  p.  122.  5  United  States  Stamping  Co.  v. 

8  Grant  v  Raymond,  6  Peters,  218,  King,  17  Blatch.  64,  1879. 


182  REISSUES.  [CHAP.  ix. 

specimens  of  the  thing  covered  by  it,  are  liable  as  infringers  ; 
even  though  those  persons  made,  or  bought,  or  used  those  spec- 
imens before  that  date,  and  when,  on  account  of  the  omission 
to  cover  them  by  the  original  patent,  they  had  a  legal  right  to 
appropriate  the  invention.1 

1  Stimpson  v.  Railroad  Co.  4  How-      Eice,  1  Fisher,  211,  1856  ;  Bliss  v. 
ard,  380,  1846  ;  Agawam  Co.  v.  Jor-      Brooklyn,  8  Blatch.  534,  1871. 
dan,    7  Wallace,  609,  1868  ;  Carr  v. 


CHAPTER  X. 

EXTENSIONS. 


255.  Constitutional    foundation   of 
extensions. 

256.  Congressional  extensions. 

257.  Mode  of  Congressional  exten- 
,  sion. 

258.  Effect  of  Congressional  exten- 
sions. 

259.  Patent  Office  extensions. 

260.  Statutory  foundation  of  Patent 
Office  extensions. 

261.  Who  might  apply   for   Patent 
Office  extensions. 

262.  Points   of   time   whereon   Pat- 
ent Office  extensions  were  grant- 
able. 

263.  Patent  Office  extension  might 
be  granted   to  an  inventor-pat- 
entee,   even   if  he  had  parted 
with  all  interest  in  the  first  term 
of  his  patent. 


264.  Patent  Office  extensions  granta- 
ble  only  where  inventors  would 
possess,  or  at  least  participate 
in,  the  benefit  thereof. 

265.  Patent    Office  extension,    how 
effectuated. 

266.  Force   of  the   Commissioner's 
decision  in  extension  cases. 

267.  Facts  which  justify  extensions. 

268.  Proceedings  preliminary  to  ex- 
tensions. 

269.  Remedy  for  fraud  in  procuring 
or  in  granting  extensions. 

270.  "  The  benefit  of  the  extension  of 
a  patent  shall  extend  to  the  as- 
signees and  grantees  of  the  right 
to  use  the  thing  patented,  to  the 
extent  of  their  interest  therein." 

271.  Adjudged  meaning  of  the  stat- 
ute quoted  in  the  last  section. 


§  255.  THE  constitutional  provision  relevant  to  the  duration 
of  patent  rights,  is  that  such  rights,  when  granted,  phall  be 
granted  for  limited  times.1  The  Patent  Act  of  1790*  pro- 
vided, that  under  the  circumstances  and  conditions  prescribed 
therein,  the  Secretary  of  State,  or  the  Secretary  of  "War,  or 
the  Attorney- General,  or  any  two  of  them,  might  issue  letters 
patent  for  an  invention,  for  any  term  not  exceeding  fourteen 
years.  The  same  provision  was  made  in  the  Patent  Act  of 
1793.'  Under  that  law,  patents  were  generally,  if  not  uni- 


J  Constitution     of      the     United 
States,  Article  I.,  Section  8. 
*  1  Statutes  at  Large,  Ch.  7,  Sec- 


tion 1,  p.  109. 

3 1  Statutes  at  Large,  Ch.  11,  Seo- 
tion  1,  p.  321. 


184:  EXTENSIONS.  [CHAP.  X. 

versally,  granted  for  the  full  fourteen  years  ;  but  whether  so 
granted  or  not,  there  was,  prior  to  1832,  no  mention  in  the 
statutes  of  any  way  in  which  any  patent,  once  granted,  could 
be  extended,  and  its  duration  thus  prolonged.  In  July  of  the 
last-mentioned  year,  it  was  enacted  :  "  That  application  to 
Congress  to  prolong  or  renew  the  term  of  a  patent,  shall  be 
made  before  its  expiration.' '  The  same  section  also  provided 
a  method  of  proceeding,  to  be  followed  by  applicants  in  such 
cases.  The  entire  section  was,  however,  merely  a  self-im- 
posed limitation  on  a  constitutional  power  of  Congress  :  the 
power  to  promote  the  progress  of  science  and  useful  arts,  by 
securing  for  limited  times,  to  inventors  the  exclusive  right  to 
their  respective  inventions.  Inasmuch  as  Congress  could  dis- 
regard that  limitation  in  any  particular  case,  the  section  was 
not  one  of  great  importance,  even  while  it  remained  on  the 
statute  book  ;  and  it  was  repealed  by  the  Patent  Act  of  July 
4,  1836.*  Since  that  date,  the  extending  of  patents  by  Con- 
gress, has  been  regulated  by  no  other  law  than  the  Constitu- 
tion. 

§  256.  Patents  may  be  extended  by  Congress  at  any  time, 
either  before  or  after  their  expiration.3  This  power  was  exer- 
cised as  early  as  1808.'  In  one  later  case  such  an  extension  was 
granted  nearly  three  years  before  the  then  existing  exclusive 
right  was  to  expire  ; 6  and  in  another,  more  than  twenty- one 
years  intervened  between  the  expiration  of  the  original  term 
of  the  patent,  and  the  granting  of  the  extension.'  Congres- 
sional extensions,  when  granted,  are  usually  granted  for  the 
term  of  seven  years  ;  but  they  may  lawfully  be  granted  for 
any  limited  length  of  time,  whether  longer  or  shorter  than 
that. 

§  257.  Some   special   acts,  for  the   extension   of  patents, 

1  4  Statutes  at  Large,  Ch.  162,  Sec-  4  Evans  v.  Jordan,  9  Cranch,  199, 

tion  2,  p.  559.  1815. 

8  5  Statutes  at  Large,  Ch.  357,  Sec-  5  Bloomer  v.  McQuewan,  14  How- 

tion  21,  p.  125.  ard,  539,  1852. 

a  Bloomer  v.  Stolley,  5  McLean,  •  Agawam  Co.  u.  Jordan,  7  Wallace, 

161,    1850  ;    Jordan    v.    Dobson,    2  583,  1868. 
Abbott,  407,  1870. 


CHAP.  X.]  EXTENSIONS.  185 

merely  extend  their  duration  by  a  simple  legislative  edict,  and 
do  no  more.1  Others  instruct  the  Commissioner  of  Patents  to 
ascertain  the  truth  relevant  to  sundry  questions  of  fact  men- 
tioned therein  ;  and  authorize  him  to  decide  whether  in  view 
of  those  facts,  and  of  sundry  considerations  of  justice  and  of 
public  policy,  the  patent  ought  to  be  extended  ;  and  direct 
him  to  extend  it,  if  his  decision  is  in  the  affirmative.11  When 
patents  are  extended  in  this  latter  method,  those  provi- 
sions of  the  special  act  which  limit  the  operation  of  the  exten- 
sion, need  not  to  be  recited  in  the  certificate  of  extension 
which  the  Commissioner  indorses  upon  the  patent  or  other- 
wise puts  forth.  The  law  reads  the  certificate  in  the  light  of 
that  statute,  without  any  such  recital.3 

§  258.  Special  Acts  of  Congress  granting  or  authorizing  ex- 
tensions of  patents,  come  within  the  general  rule,  that  the 
validity  of  a  statute  cannot  be  questioned  in  courts,  on  any 
allegation  that  its  passage  was  procured  by  fraud  or  bribery.* 
Such  Acts  are  considered  as  engrafted  on  the  general  patent 
laws,  and  are  to  be  construed  in  connection  with  them.6  Al- 
though the  Constitution  authorizes  Congress  to  grant  exclu- 
sive rights  in  inventions  only  to  inventors,  Congress  may 
provide,  when  exercising  its  power  in  particular  cases,  that  as- 
signees of  the  inventors  shall  have  the  same  rights  under  the 
extended  term,  that  they  had  under  the  original  term  of  the 
patent  extended.8 

§  259.  Patent  Office  extensions  of  patents,  were  first  au- 
thorized by  the  Patent  Act  of  July  4,  1836.'  By  the  Patent 
Act  of  March  3,  1861,  they  were  prohibited,  as  to  all  patents 
thereafter  granted.8  The  last  extension  of  the  kind,  was 

1  Bloomer  v.  McQnewan,  14  How-  B  Bloomer  v.  McQuewan,  14  How- 
ard, 539,  1852  ;    Woodworth  v.   Ed-  ard,    1852 ;    Jordan    v.    Dobson,    2 
wards,  3  Woodbury  and  Minot,  123,  Abbott,  408,  1870. 
1847.  6  Blanchard's  Gun-Stock  Turning 

*  Agawam  Co.  v.  Jordan,  7  Wallace,  Factory  v.  Warner,  1  Blatch.   259, 

583,  1868.  1848. 

3  Agawam  Co.  v.  Jordan,  7  Wallace,  *  5  Statutes    at    Large,    Ch.    357, 
583,  1868.  Section  18,  p.  124. 

4  Gibson  v.  Gifford,  1  Blatch.  529,  8 12  Statutes    at    Large,    Ch.    88, 
1850.  Section  16,  p.  249. 


186  EXTENSIONS.  [CHAP.  X. 

granted  in  1875,  and  expired  in  1882.  It  is  improbable  that 
any  general  law,  authorizing  such  extensions,  will  ever  again 
be  enacted  in  the  United  States.  Inasmuch,  however,  as 
actions  are  still  liable  to  be  brought  for  past  infringements  of 
many  of  those  formerly  in  force,  and  also  because  part  of  the 
rules  and  doctrines  of  law  established  in  suits  for  infringe- 
ments of  Patent  Office  extensions,  are  equally  applicable  to 
suits  based  on  Congressional  extensions,  it  is  expedient  to  ex- 
plain those  rules  and  doctrines  in  this  book. 

§  260.  The  Patent  Act  of  1836  provided,1  that  whenever 
any  patentee  of  an  invention  should  desire  an  extension  of  his 
patent,  he  might  make  application  therefor  in  writing,  to  the 
Commissioner  of  the  Patent  Office,  setting  forth  the  grounds 
thereof  ;  and  that  the  Commissioner  should  thereupon,  and  on 
the  payment  of  a  specified  fee.  cause  to  be  published  a  notice 
of  the  application,  and  of  the  time  and  place  when  and  where 
the  same  would  be  considered.  The  Secretary  of  State,  the 
Commissioner  of  the  Patent  Office,  and  the  Solicitor  of  the 
Treasury,  were  constituted  a  board  to  hear  and  decide  upon  the 
evidence  produced  before  them  both  for  and  against  the  ex- 
tension. If,  upon  such  hearing  in  any  particular  case,  it  ap- 
peared to  the  board,  having  a  due  regard  to  the  public  in- 
terest, that  it  was  just  and  proper  that  the  term  of  the  patent 
should  be  extended,  by  reason  of  the  patentee  without  neglect 
or  fault  on  his  part,  having  failed  to  obtain  from  the  use  and 
sale  of  his  invention,  a  reasonable  remuneration  for  the  time, 
ingenuity  and  expense  bestowed  upon  the  same,  and  upon  its 
introduction  into  public  use  ;  the  statute  made  it  the  duty  of 
the  Commissioner  to  extend  the  patent,  by  making  a  certifi- 
cate thereon  of  such  extension,  for  the  term  of  seven  years 
from  and  after  the  expiration  of  the  first  term.  The  statute 
also  provided  that  no  such  extension  should  be  granted  after 
the  expiration  of  the  term  for  which  it  was  originally  issued  ; 
and  that  when  so  extended  a  patent  should  have  the  same 
effect  in  law  as  though  it  had  been  originally  granted  for  the 
term  of  twenty-one  years  ;  and  that  the  benefit  of  such  re- 

1  5  Statutes  at  Large,  Ch.  357,  Section  18,  p.  124. 


CHAP.   X.]  EXTENSIONS.  187 

newal  should  extend  to  assignees  and  grantees  of  the  right  to 
use  the  thing  patented,  to  the  extent  of  their  respective  in- 
terests therein. 

The  Patent  Act  of  1848  '  amended  the  above  provisions  by 
vesting  the  power  of  the  board,  in  the  Commissioner  of  Pat- 
ents alone  ;  and  by  directing  him  to  take  into  consideration 
the  original  patentability  and  novelty  of  the  inventions  cov- 
ered by  patents  sought  to  be  extended,  as  well  as  to  be  gov- 
erned by  the  rules  and  principles  that  had  theretofore  gov- 
erned the  board. 

No  other  change  was  ever  made  in  the  statute  relevant  to 
the  subject,  until  in  1861  it  was  repealed  as  to  future  patents. 
As  to  patents  granted  before  March  2,  1861,  it  was  re-enacted 
in  the  Patent  Act  of  1870,"  and  again  re-enacted  in  the  Re- 
vised Statutes.3  In  both  these  re-enactments,  one  provision 
is  found,  which  did  not  exist  in  the  former  law,  namely  the 
provision  that  the  application  should  be  filed  not  more  than 
six  months  nor  less  than  ninety  days  before  the  expiration  of 
the  original  term  of  the  patent. 

§  261.  The  statutes  relevant  to  extensions  have  all  men- 
tioned ' '  patentees' '  as  being  persons  entitled  to  apply  for  ex- 
tensions, and  have  mentioned  no  others.  When  the  first  of 
those  statutes  was  enacted  in  1836,  nobody  but  an  inventor  or 
his  executor  or  administrator,  could  be  a  patentee.  In  1837, 
however,  Congress  enacted,  that  any  patent  thereafter  issued, 
might  be  made  and  issued  to  the  assignee  or  assignees  of  the 
inventor.4  In  all  subsequent  cases,  where  that  course  was 
pursued,  the  inventors  and  the  patentees  were  not  the  same 
persons  ;  but  no  corresponding  change  was  ever  made  in  the 
statute  relevant  to  extensions.  The  question  has  therefore 
arisen,  whether,  in  such  cases,  it  was  the  inventor  who  had  a 
right  to  apply  for  an  extension,  or  whether  the  patentee  was 
the  person  who  had  that  right,  or  whether  both  the  inventor 
and  the  patentee  must  have  joined  in  such  an  application. 

1  9  Statutes  at  Large,  Ch.  47,  Sec-  *•  Eevised  Statutes,  Sections  4924 

tion  1.  p.  231.  to  4928. 

*  16  Statutes  at  Large,  Ch.  230,  4  5  Statutes  at  Large,  Ch.  45,  Seo- 

Section  63  to  67,  p.  208.  tion  6,  p.  193. 


188  EXTENSIONS  [CHAP.  X. 

"Where  the  inventor  would  have  an  equitable  interest  in  the 
extension  if  granted,  it  was  proper  for  him  to  apply  for  that 
extension  alone.1  When  granted,  the  legal  title  to  such  an 
extension,  would  vest  in  the  patentee,  because  such  an  exten- 
sion was  in  the  nature  of  an  amendment  of  his  patent ;  but 
the  equitable  title  might  vest  wholly  in  the  inventor,  or  vest 
partly  in  the  inventor  and  partly  in  the  patentee,  or  vest 
partly  in  the  inventor  and  partly  in  third  persons,  according 
to  the  equitable  facts  of  each  case.  When  the  inventor 
would  have  no  equitable  interest  in  the  extension  if  granted, 
no  extension  could  "be  obtained,  either  on  his  application,  or 
on  that  of  the  patentee,  or  on  that  of  both  together  ;  because 
it  was  not  the  intention  or  scope  of  the  statute  to  grant  exten- 
sions of  patents  for  the  sole  benefit  of  others  than  the  inven- 
tors of  the  things  secured  thereby." 

Whether  the  executor  or  administrator  of  an  inventor-pat- 
entee, had  a  right  to  apply  for  an  extension,  was  the  first  of 
the  ten  questions  which  were  submitted  to  the  Supreme 
Court  in  the  celebrated  case  of  Wilson  v.  Rousseau.  That 
question  was  argued  in  the  affirmative  by  Webster,  Se ward  and 
Latrobe,  and  decided  in  the  affirmative  by  the  court.3 

Where  a  joint  patent  was  taken  out  by  joint  inventors,  all 
had  to  join  in  an  application  for  an  extension  of  that  patent,  if 
all  were  a  living  ;  and  if  any  were  dead,  the  legal  representa- 
tives of  the  deceased  had  to  unite  in  such  an  application.4 

§  262.  ^No  Patent  Office  extension  was  ever  grantable  after 
the  expiration  of  the  original  term.5  Such  extensions  could 
be  granted  at  any  time  before  the  midnight  at  the  end  of  the 
last  day  of  that  term  ;  because  fourteen-year  patents  did  not 
expire  till  the  last  hour  of  the  fourteenth  anniversary  of  the 
day  of  their  respective  dates.*  Patents  limited  in  law  to  the 

1  Sayles    v.   Dubuque  and    Sioux  4  Wickersham's  Case,  4  Off.  Gaz. 

City  Railroad   Co.  3   Bann.   &  Ard.  155,  1873. 

220,  1878.  s  Act  of  1836,  Section  18  ;  Act  of 

*  Wilson  v.  Turner,  Taney's  Cir-  1870,  Section  63  ;  Revised  Statutes, 

cuit  Court  Decisions,  292,  1845.  Section  4924. 

3  Wilson  v.  Rousseau,  4  Howard,  •  Johnson  v.  McCullough,  4  Fisher, 

673,  1846.  170,  1870. 


CHAP.   X.]  EXTENSIONS.  189 

term  of  fourteen  years  from  the  date  of  earlier  foreign  pat- 
ents, were  extendible,  at  the  discretion  of  the  Commissioner  of 
Patents,  as  well  as  those  not  so  limited  ; '  but  in  such  a  case 
the  extension  had  to  be  granted  before  the  expiration  of  the 
foreign  patent,  even  though  the  extended  patent  purported 
on  its  face  to  run  for  some  time  longer.8 

§  263.  "Whether  an  inventor-patentee  needed  to  possess  any 
interest  in  the  first  term  of  his  patent  at  the  time  of  applying 
for  an  extension  thereof,  was  the  fifth  question  submitted  to 
the  Supreme  Court  in  the  case  of  Wilson  v.  Rousseau.3  That 
question  was  decided  in  the  negative.  Even  where  the  as- 
signee of  the  first  term  of  a  patent  surrendered  and  reissued  it ; 
the  inventor-patentee  had  a  right  to  ignore  the  reissue,  and  to 
apply  for,  and  receive  an  extension  of  the  original  patent.4 

§  264.  It  was  against  the  policy  of  the  law,  if  not  against 
its  letter,  to  extend  any  patent,  in  the  extension  of  which,  if 
granted,  the  inventor  would  have  no  property  right.  The 
right  to  an  extension  was  given  by  the  law,  chiefly  with  a  view 
to  the  advantage  of  the  inventor,  and  not  of  his  assignee  or 
grantee.5  It  never  was  necessary,  however,  that  the  inventor 
should  be  in  a  condition  to  receive  the  legal  title  to  the  exten- 
sion, or  even  that  the  entire  equitable  estate  in  it,  should  belong 
to  him.  An  interest  in  the  proceeds  of  the  exclusive  right  dur- 
ing the  extended  term,  was  enough  to  satisfy  the  policy  of  the 
law  in  this  respect.8  Even  where  the  original  patent  was 
granted  to  an  assignee,  and  where  the  extension  was,  therefore, 
in  point  of  legal  title,  a  prolongation  of  his  patent  ;  the  ex- 
tension was  held  to  be  valid,  because  the  inventors  had  inter- 
ests in  its  proceeds.7  Moreover,  inventors  are  presumed  in 
law  to  have  had  a  sufficient  interest  to  support  extensions  act- 


1  Tilghman  v.  Mitchell,  9  Blatch.  Mills,  3  Fisher,  536,  1869. 

27,  1871.  5  Wilson  v.  Turner,   Taney's  Oir- 

1  New  American  File  Co.  v.  Nichol-  cuit  Court  Decisions,  292,  1845. 

son  File  Co.  8  Fed.  Hep.  816,  1881.  6  Gear   v.  Grosvenor,    1   Holmes, 

3  Wilson  v.  Rousseau,  4  Howard,  215,  1873. 

673,  1846.  i  Sayles  v.   Dubuque    and    Sioux 

4  Potter  v.  Braunsdorf ,  7  Blatch.  City  Railroad  Co.  3  Bann.    &  Ard. 
97,    1869  ;    Crompton    v.    Belknap  220,  1878. 


190  EXTENSIONS.  [CHAP.  X. 

ually  granted,  unless  the  contrary  is  proven  to  have  been  the 
fact.1 

§  265.  The  certificate  of  extension  which  was  provided  for 
by  the  statute,"  was  generally  indorsed  on  the  original  parch- 
ment letters  patent  ;  but  where  the  original  document  was  lost 
or  was  out  of  the  control  of  the  person  applying  for  the  ex- 
tension, that  certificate  was  indorsed  upon  a  certified  copy  of 
the  letters  patent  and  was  equally  valid.8 

§  266.  Jurisdiction  to  extend  a  particular  patent,  was  ac- 
quired by  the  Commissioner,  under  the  statutes  in  force  prior 
to  July  8,  1870,  whenever  the  proper  person  filed  an  applica- 
tion for  such  an  extension,  and  paid  the  requisite  fee  ; 4  pro- 
vided the  application  was  filed,  and  the  fee  paid,  long  enough 
before  the  expiration  of  the  original  term  of  the  patent,  to 
enable  the  Commissioner  to  investigate  the  matter  in  the  way 
prescribed  by  statute.5  After  July  8,  1870,  the  law  remained 
the  same  on  this  point,  except  that  under  the  statute  of  that 
date,  and  under  the  Revised  Statutes,  the  application  had  to 
be  filed  not  more  than  six  months,  nor  less  than  ninety  days 
before  the  first  term  of  the  patent  would  expire.*  The  juris- 
diction always  depended,  therefore,  upon  the  application  being 
filed  and  the  fee  paid  by  the  proper  person  at  the  proper 
time.  The  decision  of  the  Commissioner,  relevant  to  the  ex- 
istence of  his  jurisdiction,  was  never  conclusive  in  any  case.7 
The  validity  of  a  Patent  Office  extension,  is  therefore  open  to 
inquiry  in  an  infringement  suit  ;  when  it  is  questioned  on  the 
theory  that  the  person  who  applied  for  it,  was  not  such  a  per- 
son as  had  the  legal  right  to  do  so.  In  deciding  that  question, 
however,  the  courts  regard  with  respect  the  practical  construc- 
tion of  the  statute,  which  was  necessarily  involved  in  the  grant- 


1  Haggles  v.  Eddy,  10  Blatch.  56,  *  Agawam  Co.  v.  Jordan,  7  Wal- 

1872.  lace,  583,  1868. 

«  Patent  Act  of  1836,  Section  18.  « 16  Statutes  at  Large,  Ch.  230, 

3  Potter  v.  Braunsdorf,  7  Blatch.  Section  63,  p.  208,  Revised  Statutes, 
108,  1869.  Section  4924. 

4  Gear  v.    Grosvenor,   1   Holmes,  T  "Wilson  v.  Kousseau,  4  Howard, 
218,  1873.  687,  1846. 


CHAP.   X.]  EXTENSIONS.  191 

ing  of  the  extension. '  Indeed  the  Supreme  Court  has  held  that 
the  practical  construction  given  to  a  statute,  by  the  executive 
branch  of  the  government  ^charged  with  its  execution,  is  en- 
titled to  great  weight,  when  the  true  meaning  of  that  statute 
is  drawn  into  judicial  inquiry.8 

§  267.  The  meritorious  facts  which  entitled  an  inventor- 
patentee  to  a  Patent  Office  extension  were,  that  without  fault 
or  neglect  on  his  part,  he  had  failed  to  obtain  from  the  use 
and  sale  of  his  invention,  a  reasonable  remuneration  for  the 
time,  ingenuity  and  expense  bestowed  upon  it,  and  upon  its  in- 
troduction into  public  use.3  Unlike  the  foundation  facts  which 
entitle  a  patentee  to  a  reissue,  these  points  are  not  required  by 
the  statute  to  exist  absolutely.  The  statutory  provision  is 
that  they  shall  appear  to  the  satisfaction  of  the  Commissioner 
of  Patents.  It  is  therefore  immaterial  whether  the  courts  are 
satisfied  of  their  existence  or  not.  The  fact  that  a  particular 
extension  was  granted,  shows  that  the  Commissioner  was  satis- 
fied of  the  existence  of  those  facts  in  that  case  ;  and  evidence 
that  they  did  not  in  fact  exist,  is  therefore  inadmissible  in  a 
suit  for  infringement  of  the  patent  during  that  extension.4 

§  268.  The  statute  made  it  the  duty  of  the  Commissioner 
to  advertise  all  applications  for  extensions,  and  to  refer  sucli 
cases  to  the  principal  examiner  having  in  charge  the  class  of 
inventions  to  which  the  patent  sought  to  be  extended  belonged, 
and  having  received  the  report  of  the  examiner,  to  hear  and 
decide  each  particular  case  at  the  time  and  place  designated  in 
the  advertisement.  All  these  provisions  were  directory,  and 
none  of  them  were  jurisdictional.  The  validity  of  no  exten- 
sion could  therefore  be  affected  by  proof,  in  an  infringement 
suit,  that  some  or  all  of  those  acts  were  omitted  by  the  Com- 
missioner, or  were  irregularly  performed.6 

1  Brooks  v.  Bicknell,    3   McLean,  4  Clum  v.  Brewer,  2   Curtis,  506, 

250,  1843.  1855  ;  Jordan  v.  Dobson,  2  Abbott, 

8  Grant  v.  Raymond,  6  Peters,  244,  408,  1870. 

5  Brooks  v.    Jenkins,   3   McLean, 

8  Patent  Act  of  1836,  Section  18  ;  435,  1844  ;  Colt  v.  Young,  2  Blatch. 

Patent    Act    of    1870,   Section    66  ;  473,  1852  ;  Tilghman  v.  Mitchell,  9 

Revised  Statutes,  Section  4927.  Blatch.  27,  1871. 


192  EXTENSIONS.  [CHAP.  X. 

§  269.  No  fraud,  practised  upon  or  by  the  Commissioner, 
relevant  to  securing  or  granting  an  extension,  can  ever  become 
the  subject  of  inquiry  in  any  suit  fyr  infringement.  The  de- 
cision of  the  Commissioner,  in  granting  an  extension,  does  not, 
however,  foreclose  all  inquiry  into  allegations  of  fraud  ;  as  it 
does  into  allegations  of  inadvertence,  error,  or  ministerial  ir- 
regularity. The  law  is  not  so  absurd  as  to  make  a  man's  own 
decision  that  he  has  committed  no  fraud,  and  suffered  none  to 
be  committed  upon  him,  a  conclusive  adjudication  of  that 
point.  But  charges  so  grave  deserve  a  special  proceeding  for 
their  investigation.  They  are  not  to  be  bandied  about  as 
collateral  makeweights  in  infringement  suits.  When  investi- 
gated, they  must  be  investigated  in  a  special  proceeding 
brought  to  repeal  the  grant  of  the  extension. ' 

§  270.  "  The  benefit  of  the  extension  of  a  patent  shall 
extend  to  the  assignees  and  grantees  of  the  right  to  use  the 
thing  patented,  to  the  extent  of  their  interest  therein."8 
This  enactment,  in  almost  precisely  the  same  words,  has  al- 
ways found  a  place  in  statutes  relevant  to  extensions  of 
patents.3  f  The  meaning  of  this  law  was  never  learned  from 
its  perusal.  It  is  one  of  the  cases  in  which  persons  who  could 
neither  think  nor  write  with  precision  or  with  clearness,  were 
put  to  penning  statutes  for  a  nation.  It  is  an  instance  in 
which  Congress  made  a  law  for  millions,  without  having  any 
accurate  idea  of  the  nature  of  the  law  it  was  making.  The 
duty  of  ascribing  a  definite  meaning  to  the  enactment 
devolved,  therefore,  upon  the  courts.  But  the  clause  was  so 
ambiguous  that  the  judges  could  not  agree  in  regard  to  it.  A 
provision  which  should  have  been  put  beyond  question  by  a 
competent  and  faithful  Congress,  when  it  was  enacted  in  1836, 
was  still  a  subject  of  controversy  in  the  Supreme  Court  more 
than  thirty-seven  years  later.  Now  that  forty-seven  years 
have  passed  since  its  enactment,  the  text  writer  can  collate  the 


1  Rubber  Co.  v.  Goodyear,  9  Wai-          *  Revised  Statutes,  Section  4928. 
lace,  796,  1869  ;  Mowry  v.  Whitney,          8  Patent  Act  of  1836,  Section  18  ; 
14  Wallace,  434,  1871.  Patent  Act  of  1870,  Section  67. 


CHAP.  X.]  EXTENSIONS.  193 

adjudicated  cases,  and  can  deduce  and  state  the  adjudicated 
meaning  of  the  clause.  That  meaning  is  as  follows. 

§  271.  Every  person  who,  at  the  beginning  of  any  extended 
term  of  any  patent,  has  a  right  to  use  a  particular  specimen  of 
any  thing  covered  by  that  patent,  has  the  same  right  to  use 
that  specimen  during  that  extended  term,  unless  his  right 
was  expressly  limited  so  as  not  to  include  that  term ; 
and  if  such  a  person  is  the  owner  of  such  a  specimen,  he  may 
sell  it  to  be  used  by  others  during  that  extension.1 

The  limitations  expressed  in  this  rule  are  not  to  be  over- 
looked. 1.  It  applies  only  to  persons  whose  right  to  use 
existed  at  the  time  of  the  extension.  It  has  therefore  been  the 
practice  of  some  patentees  to  avoid  the  rule  altogether,  by  mak- 
ing their  licenses  expire  a  day  or  more  before  the  end  of  the 
existing  terms  of  their  respective  patents.  2.  The  rule  con- 
fers no  right  upon  any  person  on  account  of  his  having  had  a 
right  to  make  or  to  sell  specimens  of  the  patented  thing.  3. 
The  rule  does  not  apply  to  any  patent  for  a  process."  4.  The 
rule  confers  no  right  under  an  extension,  that  did  not  exist 
under  the  former  term.  Accordingly,  if  the  former  right  was 
subject  to  a  royalty,  the  right  under  the  extension  will  be  sub- 
ject to  the  same  royalty.3  5.  The  rule  confers  no  right  to 
make  or  use  or  sell  any  new  specimen  of  the  patented  thing  ; 4 
though  it  does  confer  a  right  to  repair  the  articles  to  which  it 
applies.5  6.  The  rule  does  not  apply  where  the  right  to  use, 
when  granted  by  the  patentee,  was  expressly  limited  to  the 


1  Wilson  v.  Rousseau,  4  Howard,  Black  v.   Hubbard,  3  Bann.  &  Ard. 

677,  1846  ;    Bloomer  v.  McQuewan,  40,  1877. 

14  Howard,  539,    1852  ;   Chaffee   v.  2  Wetherill  v.  Zinc  Co.  6  Fisher, 

Belting  Co.  22  Howard,  217,  1859  ;  50,  1872. 

Bloomer    v.    Millinger,     1    Wallace,  3  Union   Mfg.   Co.  v.   Lounsbury. 
340,  1863  ;  Mitchell   v.   Hawley,    16  41  New  York,  363,  1869. 
Wallace,     544,     1872  ;     Eunson     v.  4  Hodge  v.  Railroad  Co.  6  Blatch. 
Dodge,  18  Wallace,  414,  1873  ;  Paper-  165,  1868  ;  Wood  v.  Railroad  Co.  2 
Bag    Cases,    105    U.    S.    766,    1881  ;  Bissell,  62,  1868. 
Woodworth  v.  Curtis,  2  Wooodbury  6  Wilson   v.  Simpson,   9   Howard, 
and  Minot,  524,  1847  ;  Goodyear  v.  109,  1850  ;  Aiken  v.  Print  Works,  2 
Rubber  Co.  1  Clif.  349,  1859  ;  Woos-  Clif.   435,    1865  ;  Farrington   v.  De- 
ter v.  Sidenberg,  13  Blatch.  88, 1875  ;  troit,  4  Fisher,  216,  1870. 


194:  EXTENSIONS.  [CHAP.  X. 

existing  term  of  the  patent. '  The  right  provided  by  the  rule 
of  this  section  is  a  property  right  ;  and  the  specimens  to 
which  it  refers,  and  the  right  to  use  those  specimens,  may 
therefore  be  transferred  by  sale,  devise,  levy  of  execution,  or 
assignment  in  insolvency.4 

1  Mitchell  v.  Hawley,  16  Wallace,          8  Woodworth  v.  Curtis,  2  Wood- 
544,  1872.  .        bury  and  Minot,  524,  1847. 


CHAPTER    XL 

TITLE. 


272.  The  nature  of  titles,   and  the 
methods  of  their  acquisition. 

273.  Title  by  occupancy. 

274.  Title  by  assignment. 

275.  Characteristics,  authentication, 
and  effect  of  assignments. 

276.  Dormant  assignments. 

277.  Assignments  of  rights  of  action 
for  past  infringements. 

278.  Construction  of  assignments. 

279.  Reformation  of  assignments. 

280.  Assignments  of  extensions. 

281.  Recording  and  notice. 

282.  Warranty  of  title. 

283.  No  implied  warranty  of  validity. 


284.  Express  warranties  of  validity. 

285.  Equitable  titles  ;  how  created. 

286.  Equitable  titles  ;  how  treated. 

287.  Title  by  grant. 

288.  Extra-territorial  rights  convey- 
ed by  grants. 

289.  Title  by  creditor's  bill. 

290.  Title  by  bankruptcy. 

291.  Title  by  death. 

292.  Tenancy    in    common.     Joint- 
tenancy. 

293.  Joint-tenancy  ;  how  severed. 

294.  Rights  of  tenants  in  oommon  as 
against  each  other. 

295.  Partition. 


§  272.  TITLES  to  patent  rights  are  capable  of  two  independ- 
ent classifications.  One  relates  to  the  nature  of  title  ;  and  the 
other  relates  to  the  methods  by  which  title  may  be  acquired. 
In  the  first  of  these  aspects,  titles  are  divisible  into  those 
which  are  purely  legal,  those  which  are  purely  equitable, 
and  those  which  are  both  legal  and  equitable.  In  the  second 
aspect,  they  are  divisible  into  these  :  1.  By  occupancy. 
2.  By  assignment.  3.  By  grant.  4.  By  creditor's  bill.  5. 
By  bankruptcy.  6.  By  death.  Titles  which  are  both  legal 
and  equitable  may  be  acquired  in  either  of  these  methods. 
Titles  which  are  purely  equitable  may  be  acquired  by  either, 
except  the  first  ;  and  those  which  are  purely  legal  may  be 
transferred  by  either,  except  the  first,  fourth  and  fifth.  It  is 
the  plan  of  this  chapter,  to  treat  the  subject  of  title  under  this 
sixfold  division  ;  and,  in  general,  to  treat  it  with  a  view  to 
title  which  is  both  legal  and  equitable,  and  is  therefore  com- 


196  TITLE.  [CHAP.  xi. 

plete  ;  but  also,  to  incorporate  into  that  treatment,  such  state- 
ments as  may  show  the  relations  which  purely  legal  and 
purely  equitable  titles  bear  to  each  other,  and  to  the  law  ;  and 
to  conclude  the  whole  with  a  discussion  of  such  points  as  relate 
to  patent  rights  owned  contemporaneously  by  a  plurality  of 
persons. 

§  273.  Title  by  occupancy  is  that  title  to  a  patent,  which  a 
person  may  acquire  by  inventing  any  new  and  useful  process, 
machine,  manufacture,  or  composition  of  matter.  During  the 
space  of  time  between  the  day  of  in  vention  and  the  date  of 
letters  patent  therefor,  that  title  is  inchoate,  but  is  neverthe- 
less recognized  by  both  law  and  equity.1  Such  an  inchoate 
right  maybe  assigned  ;  and  an  assignment  thereof  will  convey 
the  legal  title  to  the  letters  patent,  as  soon  as  the  letters  patent 
are  granted.3  This  rule  applies  not  only  to  cases  where  the 
assignments  are  recorded  before  the  granting  of  the  patents, 
but  also  to  cases  where,  though  executed  before,  they  are  not 
recorded  till  after  that  event.3  So  also  it  applies  to  cases 
where  the  assignments  are  executed  after  applications  for  pat- 
ents are  rejected,  and  before  those  rejections  are  reversed.4 
The  inchoate  right  to  a  Patent  Office  extension  of  a  patent, 
when  such  a  right  was  provided  by  law,5  was  also  a  proper 
subject  of  assignment,  even  while  it  remained  inchoate  ; e  and 
such  an  assignment  also  operated  to  convey  the  legal  title  to 
such  an  extension,  whenever  such  an  extension  was  granted 
by  the  Commissioner  of  Patents.7 

The  title  by  occupancy,  which  an  inventor  acquires  when 
he  invents,  is  not  affected  by  the  fact  that  he  is  at  the  time  in 
the  employ  of  another  ; *  for  persons  employed,  as  much  as 


1  Gayler  v.   Wilder,    10  Howard,  5  From  July  4,  1836,  to  March  2, 

493,   1850 ;  Hendrie   v.    Sayles,    98  1861. 

U.  S.  551,  1878.  6   Nicholson  Pavement  Co.  v.  Jen- 

*  Gayler  v.   Wilder,    10  Howard,  kins,  14  Wallace,  456,  1871. 

493,  1850.  1  Railroad  Co.  v.  Trimble,  10  Wal- 

8  United  States  Stamping  Co.  v.  lace,  380,  1870. 

.Tewett,  7  Fed.  Rep.  869,  1880.  H  Whiting  v.    Graves,  3  Bann.   A 

4  Gay  v,  Cornell,    1   Blatch.   510,  Ard.  222,  1878  ;  Hapgood  u,  Hewitt, 

1849,  11  Fed.  Rep.  422,  1882. 


OHAP.   XI.]  TITLE.  197 

employers,  are  entitled  to  their  own  independent  inventions.1 
The  original  title  of  a  patentee  to  a  patent  issued  to  him,  is 
presumed  to  continue  till  he  is  shown  to  have  parted  with  it ;  * 
and  the  grantee  named  in  a  reissue  patent  is  presumed  to  be 
the  lawful  owner  of  that  patent,  until  he  is  shown  not  to 
have  owned  the  patent  which  he  surrendered  in  order  to  ob- 
tain that  reissue,  or  is  shown  to  have  parted  with  the  title  to 
the  reissue  after  that  date.3 

§  274.  An  assignment  of  a  patent  is  an  instrument  in  writ- 
ing, which,  in  the  eye  of  the  law,  purports  to  convey  the  entire 
title  to  that  patent,  or  to  convey  an  undivided  share  in  that 
entire  title.4  Such  assignments  usually  purport  to  convey 
the  entire  right  secured  by  the  patent  ;  and  therefore  they 
cover  the  exclusive  right  to  make,  to  use,  and  to  sell  the  pat- 
ented invention  throughout  the  United  States.  It  has,  how- 
ever, been  held  that  an  assignment  which  purports  on  its  face 
to  convey  the  exclusive  right  to  make  and  sell  the  invention 
covered  by  the  patent  is  a  full  assignment  of  that  patent, 
because  an  expressed  exclusive  right  to  make  and  sell,  carries 
with  it  an  implied  exclusive  right  to  use,  the  subject-matter  of 
the  patent.6  Assignments  of  legal  titles  to  patents  must  be 
in  writing,  because  the  statute  provides  no  other  method  of 
effecting  such  an  assignment  ; 8  and  because  since  patent 
rights  are  creatures  of  statute  and  not  of  common  law,  the 
transfer  of  the  legal  title  thereto  cannot  be  regulated  by  the 
rules  of  the  latter  system.7  It  seems,  however,  that  an  equit- 
able title  may  be  created  by  parol,8  and  if  such  a  title  can  be 
created  by  parol,  it  may,  perhaps,  by  parity  of  reasoning,  be 
transferred  by  the  same  method. 

§  275.  The  patent  assigned  ought  to  be  described  in  an  as- 


1  Agawam  Co.  v.  Jordan,  7  Wallace,  211,  1858. 
683,  1868.  &  Nellis  v.  Mfg.  Co.  13  Fed.  Rep. 

s  Fischer  v.  Neil,  6  Fed.  Rep.  89,  451,  1882. 
1881.  «  Revised  Statutes,  Section  4898. 

8  Washburn  &  Moen   Mfg.  Co.  v.          '  Gayler   v.    Wilder,    10   Howard, 

Haish,  4  Fed.  Rep.  900,  1880.  498,  1850. 

4  Gayler   v.  Wilder,    10   Howard,  8  Whiting   v.  Graves,  3   Bann.   4 

477, 1850 ;  Potter  v. Holland,  4  Blatch.  Ard.  225,  1878. 


198  TITLE.  [CHAP.  XL 

signment  by  its  number  and  its  date,  and  by  the  name  of  the 
patentee,  and  the  name  of  the  invention  which  it  purports  to 
cover  ;  but  an  assignment  will  be  valid,  though  it  is  lacking 
or  erroneous  in  one  or  more  of  these  particulars,  if  the  de- 
scription which  it  contains  really  excludes  doubt  as  to  the  pat- 
ent intended  to  be  conveyed.1  An  assignment  of  an  invention 
or  patent  for  a  machine,  will  not  convey  any  patent  for  a 
process  in  the  performance  of  which  that  machine  finds  its 
only  utility.8  An  assignment  by  a  natural  person  requires 
no  other  authentication  than  the  assignor's  signature.  Such 
papers  are  sometimes  acknowledged  before  a  magistrate  ;  but 
if  such  an  acknowledgment  is  of  any  value,  it  is  so  merely 
because  it  obviates  the  necessity  of  proving  the  signature  of 
the  assignor,  and  if  it  obviates  that  necessity,  it  does  so  by 
virtue  of  the  law  of  the  particular  State  in  which  it  is  acknowl- 
edged.' An  assignment  by  a  corporation  needs  not  to  be 
authenticated  by  its  corporate  seal,  but  is  properly  executed, 
if  executed  in  the  name  and  by  the  authority  of  the  corpora- 
tion, and  by  a  proper  officer,  who  signs  for  the  corporation, 
and  signs  as  an  officer  thereof.4  An  assignment  to  a  corpora- 
tion confers  no  title  upon  any  stockholder  therein  ; 5  and  an 
assignment  to  a  corporation  which  is  not  organized  till  after 
the  date  of  the  assignment  will,  at  least  by  way  of  estoppel, 
inure  to  its  benefit  when  organized,  and  will  be  good  as 
against  the  assignor." 

§  276.  An  assignment  for  which  the  consideration  was 
never  paid,  and  which  was  never  acted  upon  by  either  of  the 
parties  thereto,  conveys  no  title  to  the  assignee  ; 7  but  no  as- 
signment which  has  been  acted  upon  by  the  parties  thereto 

1  Case  v.  Morey,   1  New  Hamp-  v.  Tilden,  14  Fed.  Kep.  740,  1882. 

shire,  349,    1818  ;   Holden  v.  Curtis,  4  Gottfried  v.  Miller,  104  U.  S.  527, 

2   New  Hampshire,   63,  1819  ;  Har-  1881. 

mon  v.  Bird,  22  Wendell,  (N.  Y.)  113,  5  Gottfried  v.  Miller,    104    U.  8. 

1839  ;  Hill  v.  Thuermer,  13  Indiana,  528,  1881. 

351,  1859.  6  Dyer  v.  Rich,  1  Metcalf  (Mass.) 

«  Downton  v.  Mfg.  Co.  9  Fed.  Rep.  180,  1840. 

402,  1879  ;  Downton  v.  Allis,  9  Fed.  '  Railroad  Co.  v.  Trimble,  10  Wai- 
Rep.  771, 1881.  lace,  380,  1870. 

1  New  York  Pharmical  Association 


CHAP.   XI.]  TITLE.  199 

can  be  revoked  on  the  ground  of  a  partial  failure  to  pay  the 
promised  price. ' 

§277.  Eights  of  action  for  past  infringements  of  a  patent 
are  not  conveyed  by  any  mere  assignment  of  that  patent ;  * 
but  they  may  be  conveyed  by  any  assignment  which  purports 
to  convey  them,  whether  that  document  purports  also  to  con- 
vey the  patent/  or  purports  to  convey  the  rights  of  action 
alone.4 

§  278.  The  construction  of  assignments  depends  primarily 
upon  the  meaning  of  all  the  language  in  which  they  are 
composed,  rather  than  upon  that  of  any  particular  words  they 
contain  ; &  and  if  that  language  is  clear  in  the  eye  of  the  law, 
its  effect  cannot  be  varied  by  any  parol  evidence  ;  °  but  if 
that  language  is  ambiguous,  it  may  be  construed  in  the  light  of 
certain  classes  of  parol  proof.  The  parties  will  never  be  per- 
mitted to  testify  what  they  intended  to  signify  by  the  Ian- 
gauge  they  used,  because  if  they  were,  assignors  might  nar- 
row, and  assignees  might  widen,  the  scope  of  the  rights  con- 
veyed, by  simply  making  oath  to  alleged  former  states  of 
their  own  minds.  Perjury  could  seldom  be  detected  in  such 
a  case  ;  and  such  a  rule  would  put  property  at  the  mercy  of 
avarice.  Nor  is  any  evidence  admissible  which  merely  shows 
that  one  of  the  parties  to  an  assignment  made  such  declara- 
tions, or  did  such  acts,  in  pursuance  of  that  assignment,  as  in- 
dicate that  he  understood  the  document  in  a  sense  most  favor- 
able to  himself.  If  such  evidence  were  admissible,  the  honest 
mistake  of  an  assignor,  in  construing  his  contract,  would  often 
deprive  an  assignee  of  rights  which  he  had  honestly  bought ; 
and  the  honest  mistake  of  an  assignee  would  often  deprive  an 
assignor  of  rights  which  he  never  had  sold.  But  parol  evidence 
is  admissible  to  construe  an  ambiguous  assignment,  if  that  evi- 

1  Hartshorn  v.    Day,    19  Howard,  4  Hayward  V.Andrews,  12  Fed.Rep. 

222,  1856  ;    Mackaye  v.  Mallory,   12  786,  1882. 

Fed.  Rep.  328,  1882.  *  Washburn  v.  Gould,  3  Story,  122, 

*  Moore  v.  Marsh,  7  Wallace,  515,  1844. 

1868.  e  Railroad  Co.  v.  Trimble,  10  Wal- 

3  Hamilton  v.  Rollins,   3  Bann.  &  lace,  367,  1870. 
Ard.  160,  1877. 


200  TITLE.  [CHAP.  XL 

dence  shows  the  existence  of  such  collateral  documents,  or 
surrounding  circumstances,  attending  the  execution  of  that  as- 
signment, as  throw  light  upon  the  meaning  of  its  words  ; ' 
or  shows  that  both  parties  to  that  assignment,  practically  con- 
strued it,  after  its  execution,  and  in  so  doing  construed  it 
alike.2  If  ambiguities  still  remain  in  an  assignment  after  all 
other  recognized  methods  of  solving  them  have  been  em- 
ployed, they  are  to  be  solved  against  the  grantor,  as  he  is  sup- 
posed to  have  written  the  document,  and  therefore  to  be 
chargeable  with  the  obscurity.* 

§  279.  Reformation  of  an  assignment  may  be  had  by  means 
of  a  bill  in  equity  filed  for  that  purpose,  if  that  assignment 
does  not  conform  to  the  mutual  intention  of  the  parties  to  its 
execution  ;  but  neither  party  can  secure  such  reformation  on 
proof  of  what  his  intention  was,  unless  he  also  proves  that  the 
intention  of  the  other  party  was  the  same.4  But  no  reforma- 
tion of  an  assignment  can  affect  the  right  of  any  innocent  pur- 
chaser, for  a  valuable  consideration,  who  had  no  notice,  at  the 
time  of  his  purchase,  that  the  mutual  intention  of  the  parties 
was  different  from  the  assignment  which  passed  between 
them. & 

§  280.  No  extension  of  a  patent  is  conveyed  by  any  assign- 
ment of  the  first  term  thereof.8  Nor  is  any  extension,  which 
is  not  provided  for  by  the  general  law  when  an  assignment  is 
made,  covered  by  the  word  "  renewal  "  in  such  an  assign- 
ment. In  such  a  case,  that  word  is  held  to  mean  "  reissue" 
and  not  to  mean  "  extension."  7  But  if,  at  the  time  such  an 
assignment  is  made,  the  patent  statutes  do  provide  for  exten- 

1    Read   v.    Bowman,    2  Wallace,  114,  1867. 

591,     1864  ;    Phelps    v.     Classen,    1  4  Downton  v.  Allis,  9  Fed.  Rep. 

Woolworth,  212,    1868  ;  Witherell  v.  771,  1881. 

Zinc  Co.  6  Fisher,  50,  1872.  &  Gibson  v.  Cook,  2  Blatch.  149. 

s  Wilcoxen  v.   Bowles,     1  Louisi-  1850  ;  Woodworth  v.  Cook,  2  Blatch. 

ana  An'l,  230,  1846;  Parrott  v.  Wikoff,  151,  1850. 

1  Louisiana  An'l,  232,  1846  ;  Coleinan  6  Wilson  v.  Rousseau,  4  Howard, 

v.  Grubb,  23  Penn.  St.  409,  1854.  646,  1846. 

8  Smith    v.  Selden,  1  Blatch.  475,  7  Wilson  u.  Rousseau,  4  Howard, 

1849  ;  May  v.  Chaffee,  2  Dillon,  385,  646,  1846. 
1871  ;  Falley  v.  Giles,   29  Indiana, 


CHAP.   XI.]  TITLE.  201 

sions  of  patents  of  the  class  to  which  the  assigned  patent 
belongs,  then  the  word  "  renewal  "  is  a  sufficient  word  to  con- 
vey such  an  extension.'  An  assignment  of  an  invention,  with- 
out limitation  or  qualification,  will  convey,  not  only  the  origi- 
nal term,  but  also  any  Patent  Office  extension,  of  the  patent 
granted  for  that  invention.2  Whether  such  an  assignment 
will  convey  any  Congressional  extension,  is  an  undecided 
point.  An  affirmative  decision  upon  it  will  not  necessarily 
follow  the  rule  in  Hendrie  v.  Sayles,  but  it  is  not  improbable 
that  the  Supreme  Court  will  take  the  step  required  to  pass 
from  the  one  doctrine  to  the  other,  whenever  the  question 
arises  in  that  tribunal. 

§  281.  Recording  in  the  Patent  Office,  within  three  month- 
after  its  date,  is  necessary  to  the  validity  of  any  assignment  of 
a  patent  right,  as  against  any  subsequent  purchaser  or  mort- 
gagee, for  a  valuable  consideration,  without  notice.3  This 
statutory  provision  does  not  apply  to  any  assignment  executed 
prior  to  the  granting  of  letters  patent,  unless  that  assignment 
is  one  upon  which  a  patent  is  to  be  issued  to  the  assignee  ;  and 
in  such  a  case  the  invention  must  be  so  identified  in  the  assign- 
ment,  that  there  can  be  no  mistake  as  to  the  particular  inven- 
tion intended  to  be  conveyed.4  Nor  does  the  provision  apply 
to  any  assignment  made  by  a  judge  or  register  in  bankruptcy 
under  Title  LXI.  of  the  .Revised  Statutes  ;  and  such  an  as- 
signment though  unrecorded  more  than  three  months  after 
its  date  and  delivery,  will  prevail  against  a  subsequently  exe- 
cuted but  previously  recorded  assignment  of  the  bankrupt  or 
his  executor  or  administrator/  Neither  does  the  provision 
aPPty  to  any  assignment  which  conveyed  accrued  rights  of 
action  only.8  In  such  a  case,  the  assignee,  in  order  to  protect 
his  right,  should  give  the  infringer  notice  of  the  assignment  ; 

1  Pitts  v.  Hall,  3  Blatch.  201,  1854;  4  Wright  v.    Kandcl,  8  Fed.  Eep. 

Goodyear  v.    Gary,   4    Blatch.    303,  599,  1881. 

1859  ;  Chase  v.  Walker,  3  Fisher,  122,  s  Prime    v.    Mfg.  Co.    16  Blatch. 

1866.  456,  1879. 

1  Hendrie  v.  Sayles,  98  U.  S.  554,  6  Gear  v.  Fitch,   3   Bann.  &  Ard. 

1878.  573,  1878. 

3  Revised  Statutes,  Section  4898. 


202  TITLE.  [CHAP.  XL 

BO  that  if  the  infringer  afterward  pays  the  assignor,  or  pays 
some  subsequent  assignee,  for  that  right  of  action,  he  will  do 
so  at  his  peril,  and  will  not  discharge  his  liability  to  the  first 
assignee.1  Recording  an  assignment  of  a  patent,  is  not 
necessary  to  its  validity,  as  between  the  parties  to  that  assign- 
ment ; 2  nor  as  against  an  infringer  of  the  patent  ; s  nor  as 
against  an  innocent  purchaser  for  a  valuable  consideration 
without  notice,  who  takes  his  assignment  within  three  montlis 
after  the  date  of  the  prior  unrecorded  assignment ; 4  nor  as 
against  any  subsequent  purchaser  who  had  actual  notice  there- 
of, when  purchasing  ; 5  nor  as  against  any  subsequent  purchaser 
who  paid  no  valuable  consideration  for  the  assignment  which 
he  took.6  A  merely  good  consideration  will,  therefore,  not 
support  an  assignment  as  against  any  prior  unrecorded  assign- 
ment of  the  same  patent  given  for  a  valuable  consideration. 

The  notice  which  will  protect  a  prior  unrecorded  assign- 
ment, against  a  subsequent  assignment  for  a  valuable  con- 
sideration, may  be  actual,  or  it  may  be  constructive  only. 
Such  constructive  notice  may  be  based  on  the  fact  that  tho 
subsequent  assignee  was  informed,  at  the  time  of  his  purchase, 
that  the  prior  assignee  was  making,  using  or  selling  specimens 
of  the  invention  covered  by  the  patent  involved.  Such  mak- 
ing, using  or  selling  is  such  a  possession  of  the  invention,  as 
charges  all  purchasers  who  are  cognizant  thereof,  with  notice 

1  Woodbridge  v.    Perkins,    3   Day  3  Brooks  v.  Byam,  2   Story,   525, 

(Connecticut)    364,    1809  ;   Vanbus-  1843  ;    Pitts  v.    Whitman,    2   Story, 

kirk  v.  Hartford  Fire  Insurance  Co.  609,  1843  ;  Boyd  v.  M'Alpin,  3   Mc- 

14  Connecticut,  144,  1841  ;  Campbell  Lean,  427,  1844  ;  Case  v.  Eedfield, 

v.  Day,  16  Vermont,  558, 1844  ;  Clod-  4  McLean,  526,  1849  ;  McKernan  u. 

felter  v.  Cox,    1  Sneed  (Tenn.)  330,  Hite,  6  Indiana,  428,  1855  ;  Sone  v. 

1853  ;  Loomis  v.   Loomis,    26  Ver-  Palmer,  28  Missouri,  539,  1859. 

mont,  198, 1854  ;  Murdoch  v.  Finney,  «  Gibson  v.  Cook,  2  Blatch.  144, 

21  Missouri,  138,  1855  ;  Me  Williams  1850. 

v  Webb,  32  Iowa,  577,  1871.  5  Peck  v.  Bacon,    18   Connecticut 

9  Hoi  den  v.  Curtis,  2  New  Hamp-  377,    1847  ;    Continental    Windmill 

shire,  61,  1819  ;  Case  v.  Redfield,  4  Co.    v.    Empire     Windmill    Co.    8 

McLean,  527,  1849  ;  Black  v.  Stone,  Blatch.  295,  1871  ;  Ashcroft  v.  Wal- 

33  Alabama,    327,    1858  ;   Moore  v.  worth,  1  Holmes,  152,  1872. 

Bare,  11  Iowa,  198,  1860  ;  Turnbull  6   Saxton  v.    Aultman,    15    Ohio 

v.  Plow  Co.  6  Bissell,  229,  1874.  State,  471,  1864. 


CHAP.   XI.]  TITLE.  203 

of  whatever  title  the  maker,  user  or  seller  may  possess.1  Such 
constructive  notice  may  also  be  based  on  the  fact  that  the  sub- 
sequent purchaser  was  a  corporation  in  which  the  assignor  was 
a  director.  The  assignor's  actual  knowledge  of  his  own  prior 
assignment,  becomes  in  such  a  case,  constructive  notice  of  that 
assignment,  to  the  corporation  one  of  whose  directors  the  as- 
signor is."  Where  title  has  once  vested  in  a  subsequent  pur- 
chaser, for  a  valuable  consideration,  without  notice  of  a  prior 
unrecorded  assignment  more  than  three  months  old  ;  that  title 
becomes  absolute,  and  may  be  purchased  by  persons  who  had 
actual  knowledge  of  the  prior  assignment.3  If  this  rule  were 
otherwise,  titles  thus  derived  might  become  valueless  for 
want  of  qualified  purchasers.4 

The  foregoing  parts  of  this  section  contemplate  cases  where 
the  things  covered  by  several  assignments  of  the  same  assignors, 
are  unquestionably  identical  ;  and  where  there  is  no  ground  for 
controversy  relevant  to  the  respective  dates  of  the  conflicting 
transactions.  "Where  either  or  both  of  those  circumstances 
are  otherwise,  other  points  of  law  will  also  arise.  Where,  for 
example,  the  subsequent  assignment  purported  to  convey  no 
more  than  the  right,  title,  and  interest  of  the  assignor,  in  the 
specified  patent,  that  assignment  can  never  prevail  against  any 
prior  unrecorded  assignment  which  left  any  interest  in  the  as- 
signor ; 6  if  indeed  it  can  prevail  against  one  which  left  no 
such  interest.' 

The  date  of  an  assignment  is  the  day  of  its  delivery,  and  not 
the  date  which  appears  upon  its  face,  if  the  latter  differs  from 
the  former ; 7  and  the  three  months  within  which,  after  that 


1  Prime  v.  Mfg.  Co.  16  Blatch.  455,  dence,  Section  1503o. 

1879.  &  Brown  v.  Jackson,  3  Wheaton, 

*  Continental    Windmill    Co.    v.  449,    1818 ;    Ashcroft  v.  Walworth, 

Empire  Windmill  Co.  8  Blatch.  295,  1   Holmes,   152,  1872;   Turnbull  v. 

1871  ;    Cutter    Co.  v.    Sheldon,    10,  Plow  Co.  6  Bissell,  230,  1874. 

Blatch.  1, 1872.  «  Oliver  v.  Piatt,  3  Howard,  363, 

3  Wright   v.  Randel,  8  Fed.  Rep.  1845  ;  May  v.  Le  Claire,  11  Wallace, 
599,  1881.  232,  1870. 

4  Varick  v.  Briggs,  6  Paige,  (N.  Y.)  '  Dyer  v.  Rich,  1  Metcalf  (MasjO, 
329,  1837;  Story's  Equity  Jurispru-  180,  1840. 


204  TITLE.  [CHAP.  xi. 

date,  an  assignment  is  required  to  be  recorded,  are  lunar,  and 
not  calendar  months. ' 

§  282.  Warranty  of  title  is  implied  in  every  assignment  of 
a  patent  right  unless  that  assignment  purports,  to  convey 
merely  the  right  of  the  assignor  ;  or  unless  it  is  otherwise 
limited  to  narrower  ground  than  the  entire  patent  right  which 
it  describes.  Every  such  assignment  will  therefore  transfer 
whatever  title  the  assignor  may  subsequently  acquire  by  pur- 
chase or  otherwise.*  But  an  assignment  of  the  right,  title  and 
interest  of  the  assignor  without  anything  more,  will  not  oper- 
ate to  convey  any  title  which  is  subsequently  acquired  by 
him.3 

§  283.  No  warranty  of  validity  is  implied  in  any  assignment 
of  a  patent  right.  If  the  assignor  knows  the  patent  to  be  in- 
valid, at  the  time  he  makes  the  assignment,  he  is  guilty  of 
fraud,  and  the  assignee  may  have  relief  against  him,  on  that 
ground  ;  but  if  both  parties  are  equally  innocent  of  knowledge 
of  invalidity,  the  loss  consequent  on  any  invalidity  afterward 
brought  to  light,  must  fall  upon  the  then  owner  of  the  pat- 
ent.4 

Some  State,  courts  have  held,  that  when  sued  by  an  assignor 
for  the  purchase  price  of  a  patent,  any  assignee  may  defend 
on  any  ground  of  invalidity  which  he  can  prove  to  exist. 
This  view  is  based  on  the  theory  that  in  such  a  case  there  is  a 
failure  of  consideration.  This  theory  is  not  correct,  because 
an  assignor  may  lose,  and  an  assignee  may  gain  as  much  on 
account  of  the  assignment  of  an  invalid  patent  as  on  account 
of  a  valid  one.  An  assignment  of  an  invalid  patent  is  a  suffi- 
cient consideration  to  support  a  promissory  note,  in  any  case 
where  there  is  neither  warranty  nor  fraud.6  To  allow  an 
assignee,  who  has  made  profit  from  the  patent  assigned,  to  de- 
fend against  a  suit  for  the  promised  price,  on  the  ground  of 

1  Section  125  of  this  book.  Battle's  Equity  Cases  (N.  C.),   315, 

9  Faulka  v.  Kamp,  17  Blatch.  433,  1836  ;    Cansler    v.   Eaton,    2  Jones' 

1880.  Equity  Cases  (N.  C.),  499,  1856. 

3  Perry  v.  Corning,  7  Blatch.  195,  *  Thomas    v.    Quintard,    5   Duer 
1870.  (N.  Y.),  80,  1855. 

4  Hiatt  u.  Twomey,  1  Devereux  <fe 


CHAP.   XI.]  TITLE.  205 

some  defect  he  has  been  able  to  discover  in  the  patent,  would 
be  very  unjust.  Such  a  rule  might  enable  an  assignee  to  reap 
enormous  gains  from  practically  exclusive  rights,  and  then  to 
avert  payment  for  those  rights,  on  some  far-fetched  ground  of 
invalidity,  which  never  for  one  moment  had  disturbed  his  ex- 
clusive possession  of  the  patented  privilege.  Even  where  an 
assignee  is  not  shown  to  have  derived  any  benefit  from  the  as- 
signment of  a  particular  patent,  he  ought  not  to  be  permitted 
to  defend  against  a  suit  for  the  price  he  promised  to  pay 
therefor  ;  because  that  assignment  operated,  at  least  to  pre- 
vent the  assignor  from  making,  using  or  selling  specimens  of 
the  patented  thing.  It  is  perfectly  well  settled  that  loss  or 
disadvantage  to  the  promisee,  is  a  sufficient  consideration  to 
support  a  contract,  even  where  that  contract  resulted  in  no 
benefit  to  the  promisor.1 

§  284.  Express  warranties  of  validity  may  of  course  be  in- 
corporated in  assignments  of  patents  ;  and,  where  so  incorpo- 
rated, they  will  subject  assignors  to  actions  for  damages,  if  the 
patents  assigned  are  found  to  be  in  fact  invalid.2  Parol 
warranties  of  validity,  when  they  accompany  written  assign- 
ments of  patents,  are  inadmissible  as  foundations  for  actions 
for  damages  based  on  alleged  invalidity  of  those  patents  ; ' 
but  such  parol  statements  may  be  admissible  as  aiding  to  prove 
fraud,  in  a  case  where  other  evidence  shows  that  the  assignor 
knew  the  patent  to  be  invalid,  when  he  made  the  assign- 
ment.4 In  such  a  case,  however,  the  assignee's  right  of  action 
rests  upon  the  fraud  and  not  upon  the  parol  warranty.5  It 
follows,  therefore,  that  the  parol  warranties  of  validity  which 
sometimes  accompany  assignments  of  patents,  have  little  legal 
value. 

§  285.  Equitable  titles  to  patent  rights  may  arise  in  a  num- 
ber of  different  ways.  Such  a  title  accrues  to  an  assignee  when 

1  Parsons   on   Contracts,  Book  2,  21  Missouri,  341,  1855. 

Ch.  1,  Sec.  2.  <  McClure  v.  Jeffrey,   8    Indiana, 

!  Wright  v.    Wilson,  11  Eichard-  83,  1856. 

son  (S.  C.  Law  Reports),  151,  1856.  &  Rose  v.  Hurley,  39  Indiana,  78, 

3  Van  Ostrand  u.  Reed,  1  Wendell,  1872. 
(N.  Y.)  432,  1828  ;  Jolliffe  v.  Collins, 


206  TITLE.  [CHAP.  xi. 

a  patent  is  granted  to  an  inventor,  for  an  invention  made  or 
completed  after  the  execution  of  an  assignment  adapted  to 
convey  it.1  Such  a  title  accrues  to  an  inventor  when  a  patent 
is  granted  to  his  assignee,  in  pursuance  of  an  assignment, 
which  was  accompanied  by  a  contract  providing  that  the  as- 
signee should  pay  to  the  inventor  all  or  some  portion  of  the 
proceeds  of  the  patent.*  Such  a  title  accrues  to  an  assignee 
of  a  term  for  years,  in  a  patent  right,  if  that  term  is  limited  to 
expire  before  the  expiration  of  the  existing  term  of  the  pat- 
ent.' And  such  a  title  will  doubtless  arise  out  of  any  con- 
tract which  purports  to  give  a  person  a  beneficial  interest  in  a 
patent  right  ;  but  which  does  not  amount  to  an  assignment  or 
grant  of  legal  title,  nor  to  a  license  to  make,  to  use,  or  to  sell 
the  invention.  So  also,  any  facts  which  would  create  a  con- 
structive or  a  resulting  trust,  if  they  related  to  other  kinds  of 
intangible  personal  property,  will  doubtless  have  the  same 
effect  upon  property  in  patents,  when  they  relate  thereto. 

§  286.  In  whatever  way  an  equitable  title  to  a  patent  right 
may  be  found  to  have  arisen,  it  will  be  upheld  by  a  court  of 
equity,  as  against  the  naked  legal  title.  But  if  the  holder  of 
the  legal  title  assigns  the  patent  to  a  purchaser  for  a  valuable 
consideration,  without  notice  of  the  equitable  title  ;  such  a 
purchaser  will  take  the  entire  ownership  of  the  patent,  freed 
from  the  prior  equitable  incumbrance.4  One  district  judge 
has  decided  this  point  the  other  way,  holding  that  the  maxim 
caveat  emptor  applies  to  such  a  case. "  But  that  decision  was 
rendered  before  that  in  Hendrie  v.  Sayles  ;  and  was  made  in 
evident  forgetfulness  of  the  really  applicable  maxim  that, 
"  between  equal  equities  the  law  will  prevail  ;"  and  of  the 
well  established  doctrine,  that,  if  a  purchaser  for  a  valuable  con- 
sideration without  notice  of  a  prior  equitable  right,  obtains  a 

1  Littlefield  v.  Perry,  21  Wallace,  8  Cook  v.  Bidwell,  8  Fed.  Rep.  452, 

226,    1874 ;    Nesmith   v.    Calvert,   1  1881. 

Woodbury  &  Minot,  34,  1845  ;  Conti-  4  Hendrie  v.  Sayles,  98  U.  S.  549, 

nental  Windmill  Co.  v.  EmpireWind-  1878. 

mill  Co.  8  Blatch.  295,  1871.  6  Consolidated   Fruit    Jar  Co.    v 

*  Sayles  v.  Dnbuque  &  Sioux  City  Whitney,  2  Bann.  &  Ard.  385,  1876. 
Railroad  Co.  5  Dillon,  563,  1878. 


CHAP.   XI.]  TITLE.  207 

legal  estate  at  the  time  of  his  purchase,  he  will  be  entitled  to 
priority  in  equity,  as  well  as  in  law.1  The  maxim  of  caveat 
emptor  applies  where  a  seller  has  no  title  whatever.8  When  a 
seller  has  the  legal  title,  but  not  the  equitable,  then  the  other 
maxim  governs  the  rights  of  assignees. 

§  287.  A  grant,  from  one  person  to  another,  of  a  patent 
right  is  a  conveyance  in  writing  of  the  entire  right,  or  of  an 
undivided  interest  therein,  within  and  throughout  a  certain 
specified  portion  of  the  territory  of  the  United  States.3  The 
subject  matter  of  a  patent  right  is  not  divisible  in  any  other 
category  than  a  territorial  one  ; 4  and  therefore  grants  cannot 
be  made  to  convey  one  of  several  inventions  covered  by  a  pat- 
ent ;  nor  to  convey  an  exclusive  right  to  make,  use  and  sell  a 
patented  invention  for  one  of  several  purposes  to  which  it  is 
applicable.  The  rules  which  relate  to  the  form,  authentica- 
tion, construction,  revocation,  reformation  and  effect  of  assign- 
ments, refer  with  equal  force  to  grants  ;  except  as  otherwise 
stated  or  implied  in  this  section,  and  except  as  the  explained 
nature  of  a  grant  clearly  indicates  otherwise.  In  addition  to 
those  rules,  there  are  several  which  refer  to  grants  and  not  to 
assignments  ;  and  to  the  latter,  it  is  now  in  order  to  attend. 

A  grant  is  not  void  for  ambiguity  where  it  purports  to  con- 
vey all  of  the  territory  of  the  United  States  except  a  number 
of  counties  theretofore  conveyed  to  others,  but  not  specified 
in  the  grant ;  because  the  reservation  is  such  an  one  as  is  capa- 
ble of  being  made  certain  by  competent  evidence.*  It  is  not 
inconsistent  with  the  character  of  a  document  as  a  grant, 
that  it  contains  a  clause  of  forfeiture  in  case  of  non-payment 
of  royalties,  or  a  clause  providing  that  the  grantor  shall  prose- 
cute and  defend  suits  relating  to  the  exclusive  right  granted.' 


•    '  Bispham's  Principles  of  Equity,  *  Goodyear  v.  Railroad  Co.  1  Fish- 
Section  40.  er,   627,    1853  ;  Suydam  v.   Day,  2 

*  Abbett  v.  Zusi,  5   Bann.  &  Aid.  Blatch.  21,  1846  ;  Washing  Machine 

38,  1879.  Co.  v.  Earle,  3  Wallace,  Jr.  320, 1861. 

3  Gayler  v.   Wilder,    10   Howard,  6  Washburn  &  Moen   Mfg.  Co.  v. 

494, 1850;  Moore  v.  Marsh,  7  Wallace,  Haish,  4  Fed.  Hep.  908,  1880. 

521,  1868  ;  Littlefield  v.   Perry,  21  •  Littlefield  v.  Perry,  21  Wallace, 

Wallace,  219,  1874.  220,  1874. 


208  TITLE.  [CHAP.  xi. 

Nor  is  it  inconsistent  with  a  grant,  that  the  document  limits 
the  exercise  of  the  exclusive  right,  to  the  making,  using  and 
selling  of  a  particular  number  of  specimens  of  the  patented 
invention  involved.'  But  no  instrument  can  be  a  grant  which 
reserves  a  right  to  the  grantor,  to  sell  specimens  of  the  patent- 
ed thing  within  the  territory  covered  thereby  ;  though  it  re- 
serves him  no  right  to  make  or  to  use  any  such  specimen  with- 
in that  territory.8 

§  288.  A  grant  of  an  exclusive  right  to  make,  use,  and  sell 
a  particular  patented  invention  within  a  particular  part  of  the 
United  States,  confers  the  right  to  use,  anywhere  within  the 
United  States,  those  specimens  of  that  invention  which  are 
made  and  sold  under  the  grant,  and  within  the  territory  cover- 
ed thereby.3  This  point  was  established  in  a  case  where  the 
patented  article  was  capable  of  being  used  but  once  ;  but  in  the 
other  case  which  supports  it,  the  rule  was  applied,  though  the 
thing  covered  by  the  patent  was  capable  of  repeated  uses.  It  was 
a  remark  of  Sir  Francis  Bacon,  that  :  "  It  is  the  vice  of  subtle 
minds  to  attach  too  much  importance  to  slight  distinctions." 
Such  a  mind  may  possibly  hold  that  Judge  SAWYER  was  not 
justified  in  disregarding  the  distinction  just  mentioned.  But 
Judge  SAWYER  took  still  a  further  step  in  the  case  last  cited. 
He  refused  to  enjoin  the  defendant  from  selling,  west  of  the 
Rocky  Mountains,  those  specimens  of  the  patented  invention 
which  were  lawfully  made  and  sold  east  of  that  landmark  ; 
though  the  complainant  was  the  sole  grantee  of  all  the  territory 
which  he  sought  to  protect  from  intrusion.  It  is  probable 
that  this  practice  and  the  doctrine  upon  which  it  is  founded 
will  also  be  approved  by  the  Supreme  Court  when  the  question 
arises  in  that  tribunal,  for  it  has  said,  that :  "  Power  to  sell 
the  machine  and  transfer  the  accompanying  right  of  use  is 
an  incident  of  unrestricted  ownership."4 

1  Wilson  v.  Rousseau,  4    Howard,  8  Adams  v.  Burke,  17  Wallace,  453, 

646,  1846  ;   Washburn  v.   Gould,   3  1873  ;  McKay  v.  Wooster,  2.  Sawyer, 

Story,  122,  1844  ;  Ritter  v.  Serrell,  2  373,  1873. 

Blatch.  379,  1852.  <  Paper-Bag   Cases,  105  U.  S.  771, 

8  Pitts    v.    Jameson,    15    Barbour  1881. 
(N.  Y.  Supreme  Court),  315,  1853. 


CHAP.  XI.]  TITLE.  209 

§  289.  A  creditor's  bill  may  operate  to  transfer  a  complete 
title,  or  an  equitable  title,  to  a  patent  right,  whenever  a  judg- 
ment is  obtained  against  its  owner,  and  an  execution  issued  on 
that  judgment,  is  returned  nulla  bona ;  and  the  court  in 
which  the  creditor's  bill  is  filed  may  appoint  a  trustee  to  exe- 
cute a  proper  assignment.1  But  a  suit,  instituted  by  the  filing 
of  such  a  bill,  is  not  a  patent  suit  in  such  a  sense  as  to  confer 
jurisdiction  on  a  Federal  court.'  Where  jurisdiction  is  not  con- 
ferred upon  those  courts  by  variant  citizenship,  or  other  cause 
known  to  the  law,  it  will  be  necessary  to  proceed  in  the  courts 
of  the  States.  In  such  of  the  States  as  have  preserved  equity 
pleadings  and  proceedings,  a  creditor's  bill  is  the  proper  docu- 
ment to  file  in  such  a  court,  when  pursuing  such  relief  ;  but  in 
the  States  which  have  adopted  codes  of  civil  procedure,  in 
place  of  the  common  law  and  equity  plans  of  judicature,  the 
end  in  view  may  be  reached  by  what  are  called  proceedings 
supplementary  to  executions.3 

§  290.  Adjudication  of  bankruptcy  and  appointment  of  an 
assignee,  operated,  under  the  bankrupt  law  of  1867,  to  vest 
in  such  assignee,  all  patent  rights  of  the  bankrupt  and  all 
choses  in  action  based  thereon,  except  such  as  were  held  in 
trust  by  him,  and  except  such  as  were  exempted  from  at- 
tachment, or  seizure,  or  levy  on  execution  by  virtue  of  the  laws 
of  the  United  States,  or  by  virtue  of  the  laws  of  the  State  in 
which  the  bankrupt  had  his  domicil  at  the  time  of  the  com- 
mencement of  the  bankruptcy  proceedings.4  Though  this 
bankruptcy  law  was  repealed  in  1878,  many  titles,  to  patent 
rights  now  in  force,  were  transferred  by  its  operation  ;  and  it 
is  therefore  still  a  law  of  practical  importance.  Whenever 
new  bankruptcy  statutes  are  hereafter  enacted,  it  is  probable 
that  similar  provisions  will  be  inserted  also  in  them.  Corre- 
sponding proceedings  in  insolvency  under  State  laws,  do  not 
have  the  operation  of  bankruptcy  proceedings  in  this  particu- 
lar. They  do  not  confer  upon  the  assignee  in  insolvency,  any 

1  Ager  v.  Murray,  105  U.  S.  126,          8  Pacific  Bank  v.    Robinson,    57 

1881.  California,  522,  1881. 

"Eyan  v.  Lee,  10  Fed.  Rep.  917,          4  Revised  Statutes,  Sections  5046, 

1882.  5053,  5045. 


210  TITLE.  [CHAP.  xr. 

title  to  the  patent  rights  of  the  insolvent.1  But  it  is  probable, 
that  courts  which  have  jurisdiction  of  such  proceedings,  may 
compel  the  insolvent  to  execute  such  an  assignment  to  the  as- 
signee in  insolvency  as  will  convey  the  same  rights  to  the  latter, 
as  those  which,  without  such  a  document,  were  conveyed  to 
an  assignee  in  bankruptcy  under  the  bankrupt  law  of  1867.* 

§  291.  Death  of  an  inventor,  before  the  grant  of  a  patent 
for  his  invention,  causes  a  transfer  of  his  inchoate  title,  to  his 
executor  or  administrator,  in  trust  for  the  heirs  at  law  of  the 
deceased  in  case  he  dies  intestate,  or  in  trust  for  his  devisees 
in  case  he  leaves  a  will  disposing  of  the  invention.3  Such  an 
inchoate  title  has  several  of  the  same  qualities,  in  the  hands  of 
the  executor  or  administrator,  that  it  had  in  the  hands  of  the 
deceased.  If  it  was  an  unassigned  inchoate  title  in  the  hands 
of  the  inventor,  it  is  likewise  so  in  the  hands  of  his  legal  repre- 
sentative. If  the  deceased  had  parted  with  the  equitable 
title,  and  had,  at  his  death,  only  the  inchoate  legal  title,  the 
equitable  title  will  be  unaffected  by  the  death  of  the  inventor, 
and  will  remain  the  property  of  its  purchaser.4  So  also,  if 
the  inventor  had  parted,  prior  to  his  death,  with  the  inchoate 
legal  title,  and  retained  the  equitable  title,  then  the  latter,  and 
not  the  former,  will  devolve  upon  his  executor  or  adminis- 
trator. Death  of  the  owner  of  ajiy  legal  or  equitable  title  to  a 
patent  right  already  in  existence,  causes  a  transfer  of  that  title 
to  his  executor  or  administrator,  in  like  manner  as  it  causes  the 
transfer  of  any  other  intangible  personal  property  of  the  de- 
ceased.* Such  a  legal  representative  may  convey  the  title  by 
assignment  or  by  grant,  by  means  of  any  suitable  instrument  in 
writing,  and  in  pursuance  of  such  general  or  special  authority 
from  the  probate  court  as  is  prescribed,  in  that  behalf,  by  the 
laws  of  the  particular  State  whose  court  that  tribunal  is.* 


1  Ashcroft  v.  Walworth,  1  Holmes,  Bann.  &  Aid.  177,  1874. 

154,  1872.  *  Brooks    v.   Jenkins,   3  McLean, 

*  Ager  v.  Murray,  105  U.  S.  131,  441,  1844  ;  Hodge  v.  North  Missouri 

1881.  Bailroad  Co.  1  Dillon,  104,  1870. 

a  Revised  Statutes,  Section  4896.  *  Brooks  u.  Jenkins,  3  McLean,441, 

>    *  Northwestern  Extinguisher  Co.  1844. 
v.  Philadelphia  Extinguisher  Co.  1 


CHAP.  XI.]  TITLE.  211 

Where  there  are  several  joint  executors  or  administrators,  the 
assignment  or  grant  of  one  of  them,  is  legally  the  assignment 
or  grant  of  them  all  ; '  and  if  an  administrator  denominates 
himself  an  executor,  or  if  an  executor  calls  himself  an  adminis- 
trator, in  such  a  document,  that  document  will  be  none  the  less 
efficacious  to  convey  the  title  which  he  holds  in  his  true  ca- 
pacity.8 

§  292.  Tenancy  in  common,  in  a  patent  right,  will  arise 
whenever  the  sole  owner  of  such  a  right,  in  all  or  in  part  of 
the  territory  of  the  United  States,  conveys  to  another  an  undi- 
vided interest  in  the  whole  or  in  part  of  the  right  which  he 
owns.  Mutual  ownership  of  some  sort  arises  when  a  plurality 
of  persons  are  joint  inventors  of  a  process  or  thing,  for  which 
they  obtain  a  joint  patent  ;  and  also  when  a  plurality  of  persons 
obtain,  by  one  assignment  or  grant,  the  undivided  ownership 
of  a  patent,  or  the  undivided  ownership  of  a  patent  right  in  a 
part  of  the  territory  of  the  United  States.  Whether  such 
mutual  ownership  constitutes  tenancy  in  common,  or  constitutes 
joint-tenancy  is  a  question  upon  which  no  positive  answer  can 
at  present  be  given.  The  text  writer  can  do  no  more  than  to 
state  the  considerations  upon  which  each  of  the  two  possible 
answers,  if  given,  must  be  based,  and  to  state  which  of  those 
Bets  of  considerations  appear  to  be  the  more  convincing. 

In  favor  of  the  hypothesis  of  joint-tenancy,  it  may  be  said 
that  joint-tenancy  is  a  doctrine  of  the  common  law  which  is  as 
applicable  to  personal  property  as  to  real  estate  ; 3  and  that 
such  mutual  ownership  of  patent  rights,  as  those  now  under 
inspection,  are  characterized  by  all  of  the  four  unities  which 
constitute  joint-tenancy  ;  the  unity  of  interest  ;  the  unity  of 
title  ;  the  unity  of  time  ;  and  the  unity  of  possession.4  la 
answer  to  this  it  may  be  said  that  the  doctrine  of  survivorship 
is  the  distinguishing  characteristic  of  joint-tenancy  ;  and  that 
the  reasons  which  gave  rise  to  that  description  of  estate  in 


1  Wintermute    v.  Kedington,     1          3  Blackstone,  Book  2,  Ch.  25,  last 
Fisher,  239,  1856.  paragraph. 

*  Newell  v.  West,  13  Blatch.  114,          4  Blackstone,  Book  2,  Ch.  12. 
1875. 


212  TITLE.  [CHAP.  xi. 

England,  never  existed  in  the  United  States  ;  and  that  those 
reasons  were  founded  on  the  feudal  idea  that  the  services  due 
to  the  superior  lord,  should  be  kept  entire  ;  and  that  the  doc- 
trine of  survivorship  was  invented  to  secure  that  feudal  end  ; 
and  that  it  has  no  foundation  on  any  principle  of  natural 
justice,  or  on  any  point  of  public  policy  relevant  to  American 
patent  rights  ;  and  that,  therefore,  joint-tenancy  and  its  inci- 
dent, survivorship,  are  not  such  doctrines  of  the  common  law 
as  are  entitled  to  be  incorporated  into  our  American  patent- 
system.  To  this  argument  against  joint-tenancy,  it  may  be 
replied  that  it  has  as  reasonable  an  application  to  American 
patent  rights,  as  it  has  to  American  real  estate  ;  and  that  the 
Supreme  Court  of  the  United  States  has  applied  it  to  the  latter 
sort  of  property.1  To  this  it  may  be  rejoined  that  though  the 
question  was  involved,  it  was  not  argued,  in  the  case  last  cited  ; 
and  that  the  Supreme  Courts  of  several  of  the  States  have  de- 
cided that  joint-tenancy  is  not  a  part  of  American  common 
law."  And  it  may  be  further  rejoined  that  even  if  applicable 
to  American  real  estate,  it  is  not  applicable  to  American  patent 
rights,  because,  if  it  were,  it  would  often  operate  to  defeat  the 
reward  to  inventors  which  it  is  a  purpose  of  American  patent 
law  to  secure  ;  and  because  the  same  reasons  which  in  England 
excluded  the  doctrines  of  joint-tenancy  from  personal  property 
used  in  agriculture  or  in  commerce,3  should  in  America  exclude 
those  doctrines  from  personal  property  created  by  invention  and 
used  in  manufactures.  And  it  may  be  further  rejoined  that, 
even  if,  in  the  absence  of  contrary  legislation,  the  doctrines  of 
joint-tenancy  would  apply  to  American  patent  rights,  yet  those 
doctrines  have  been  substantially  abrogated  throughout  most 
of  the  United  States,  by  means  of  those  State  statutes  which 
have  repealed  or  emasculated  those  doctrines  within  the  several 
States,  and  by  virtue  of  Section  721  of  the  Revised  Statutes, 
which  had  adopted  those  State  statutes.  To  the  last  re- 


1  Mayburry  v.  Brien,  15  Peters,  37,  Steinberger,  2  Ohio,  306,  1826  ; 

1841.  Harris  v.  Clark,  10  Ohio,  5,  1840. 

8  Phelps  v.  Jepson,  1  Boot  (Con-  3  Blackstone,  Book  2,  Ch.  25,  last 

necticut),  48,  1769 ;  Sergeant  v.  paragraph. 


CHAP.  XI.]  TITLE.  213 

joinder  it  may  be  surrejoined  that  Section  721  of  the  Re- 
vised Statutes  does  not  adopt  the  State  statutes  on  this  sub- 
ject ;  because  that  section  is  identical  with  Section  34  of  the 
Judiciary  Act  of  1789,  and  because  the  latter  provision  has 
been  held  by  the  Supreme  Court,  to  apply  only  to  cases  arising 
out  of  the  laws  of  the  States.1  To  this  surrejoinder,  there 
may  be  a  rebutter  that  this  part  of  the  decision  in  the  United 
States  v.  Reid,  has  apparently  been  overruled  in  later  Supreme 
Court  cases."  To  the  mind  of  the  text  writer  it  appears  that 
those  of  the  foregoing  arguments  which  deny  joint-tenancy  in 
patent  rights,  are  on  the  whole  more  convincing  than  those 
which  affirm  it.  All  mutual  ownership  of  such  rights,  will 
therefore  be  treated  in  the  following  pages,  as  though  it  were, 
undeniably,  tenancy  in  common. 

Inasmuch,  however,  as  the  question  has  never  been  decided 
by  the  Supreme  Court,  it  would  be  prudent  to  avoid,  as  far 
as  possible,  the  circumstances  which  created  a  joint-tenancy  at 
English  common  law  ;  for  if  joint-tenancy  should  be  held  to 
exist  in  any  patent  right,  its  doctrine  of  survivorship  would 
deprive  the  heirs  or  devisees  of  a  dying  joint-tenant,  of  their 
just  inheritance,  and  would  confer  that  inheritance  upon  the 
joint-tenant  who  survived.3 

§  293.  The  circumstances,  which,  unless  avoided,  may  be 
held  to  create  a  joint-tenancy  in  a  patent,  can,  where  joint  in- 
ventors become  joint  patentees,  be  avoided  by  means  of  a 
joint  assignment  of  the  patent  to  a  third  person,  and  a  separate 
reassignment  to  the  patentees,  of  their  respective  undivided 
interests.  Such  an  operation  will  turn  any  joint-tenancy  into 
a  tenancy  in  common,  because  it  destroys  the  unity  of  title, 
and  if  the  separate  reassignments  are  executed  and  delivered 
on  different  days,  it  also  destroys  the  unity  of  time.  Where  a 
sole  inventor  sells  an  undivided  interest  in  his  invention  or  his 
patent,  the  objectionable  circumstances  can  be  avoided  by  sim- 


1  United  States  v.  Reid,  12  How-  Black.  431,  1861  ;  Wright  v.  Bales, 

ard,  363,  1851.  2  Black.  535,  1862. 

s  Vance  v.  Campbell,  1  Black.  427,  3  Blackstone,  Book  2,  Ch.  25,  last 

1861  ;  Haussknecht  v.  Claypool,  1  paragraph. 


214:  .TITLE.  [CHAP.  xi. 

ply  assigning  that  undivided  interest  to  the  purchaser  ;  instead 
of  doing  the  common,  but  unscientific,  thing  of  assigning  the 
whole  invention,  or  the  whole  patent,  to  himself  and  to  that 
purchaser  jointly.  And  in  a  case  where  a  sole  patentee  assigns 
his  patent,  or  grants  a  territorial  right  therein,  to  a  plurality 
of  purchasers,  those  circumstances  can  be  avoided  by  simply 
executing  and  delivering  a  separate  paper  to  each  purchaser 
for  his  undivided  share  ;  instead  of  making  one  document  con- 
vey the  whole  right  to  all  the  purchasers  together.  Indeed 
any  device  which  will  destroy  either  of  the  four  unities  of  a 
joint-tenancy,  will  destroy  that  tenancy,  and  at  the  same  in- 
stant will  destroy  the  right  of  survivorship.  If  the  unity 
of  possession  is  destroyed,  the  ensuing  estate  of  each  owner 
is  an  estate  in  severally;  but  if  that  unity  is  preserved,  while 
either  or  all  of  the  others  are  destroyed,  the  joint-tenancy 
is  converted  into  a  tenancy  in  common.' 

§  294.  One  tenant  in  common  of  a  patent  right  may  exercise 
that  right  to  any  extent  he  pleases  without  the  consent  of  any 
co-tenant.  He  may  make,  use,  and  sell,  specimens  of  the 
patented  invention  to  any  extent,  and  may  license  others  to  do 
so,  and  neither  he  nor  his  licensees  can  be  enjoined  from  a  con- 
tinuance in  so  doing."  Nor  can  any  recovery  of  profits  or 
damages  be  had  against  any  such  licensee,  at  the  suit  of  any 
co-tenant  of  any  such  licensor.8  It  seems  to  logically  follow 
that  no  recovery  of  profits  or  damages  can  be  had  against  one 
co-tenant,  who,  without  the  consent  of  the  others,  has  made, 
used  or  sold  specimens  of  the  patented  thing.  That  doctrine 
has  however  been  denied  by  one  federal  judge  ;  *  and  doubted 
by  another  ;  *  though  it  has  been  enforced  by  a  third,8  and 
by  the  Supreme  Court  of  Massachusetts  ; 7  and  by  the  Supreme 
Court  of  New  York.8  Either  one  of  several  co-tenants  in  a 


1  Blackstone,  Book  2,  Ch.  12.  223,  1876. 

9  Chun  v.  Brewer,  2  Curtis,  523,  6  Whiting  v.  Graves,  3  Bann.  &Ard. 

1855.  225,  1878. 

3  Dunham  w.  Railroad  Co.  7  Bissell,  7  Vose  v.  Singer,  4  Allen,  (Mass.) 

223,  1876.  232,  1862. 

*  Pitts  v.  Hall,  3  Blatch.  207, 1854.  »  De    Witt   v.   Mfg.   Co.   5    Hun, 

6  Dunham  v .  Railroad  Co.  7  Bissell,  (N.  Y.)  301,  1875. 


CHAP.  XI.]  TITLE.  215 

patent  right,  may  of  course  sell  his  right  independently  of  the 
others  ; '  but  where  joint  trustees  are  appointed  to  hold  the 
legal  title  to  a  patent,  and  to  manage  it  according  to  their 
mutual  judgment  and  discretion,  a  joint  deed  of  all  those  trus- 
tees is  necessary  to  convey  that  right  to  another.2 

§  295.  Partition  of  a  patent  right,  held  by  tenancy  in 
common,  may  of  course  be  made  by  the  common  consent  and 
mutual  action  of  all  the  owners  of  that  right ;  but  no  such 
partition  can  be  made  against  the  will  of  either  owner.  This 
rule  follows  from  the  fact  that' no  partition  of  estates  held  by 
tenancy  in  common  was  compellable  at  common  law  ; 3  and 
from  the  fact  that  no  United  States  statute  has  provided  for 
any  such  partition  ;  and  from  the  fact  that  the  State  statutes 
relevant  to  partition  of  real  estate  do  not  apply  even  to 
personal  property  which  is  held  under  the  laws  of  the  States, 
and  surely  cannot  apply  to  any  personal  property  which  is 
created  by  the  laws  of  the  nation. 

1  May  v.   Chaffee,    2  Dillon,  388,       11  Fed.  Rep.  302,  1882. 
1871.  3  Blackstone,  Book  2,  Ch.  12. 

s  Wiscott  v.   Agricultural  Works, 


CHAPTEK  XII. 

LICENSES. 


296.  Licenses  defined  and  described. 

297.  Express  licenses  to  make,  with 
implied  leave  to  use,  or  implied 
leave  to  sell  the  things  made. 

298.  Express  licenses  to  use,  -with 
implied  leave  to  make  for  use. 

299.  Express  licenses  to  sell,  with 
implied  leave  to  the  vendees  to 
use  and  to  sell  the  things  they 
purchase. 

300.  Licenses  to  make  and  use,  with- 
out implied  leave  to  sell. 

301.  Licenses  to  make  and  sell,  or 
to  use  and  sell,  with  implied 
leave  to  the  vendees  to  use  and 
to  sell  the  articles  they  buy. 

302.  Express  licenses  so  restricted 
as  not  to  convey  implied  rights. 


303.  Written  and  oral  licenses. 

304.  Recording  and  notice. 

305.  Licenses  given  by  one  of  sev- 
eral owners  in  common,  and  li- 
censes given  to  one  of  several 
joint  users. 

306.  Construction  of  licenses. 

307.  Warranty  and  eviction. 

308.  Clauses  of  forfeiture. 

309.  Effects  of  forfeiture. 

310.  Assignability  of  licenses. 

311.  Purely  implied  licenses. 

312.  Implied  licenses  from  conduct, 
and  first  by  acquiescence. 

313.  Implied  license  from  conduct 
by  estoppel. 

314.  Implied  license  from  actual  re- 
covery of  damages  or  profits. 


§  296.  ANY  conveyance  of  a  right  under  a  patent,  which  does 
not  amount  to  an  assignment  or  to  a  grant,  is  a  license.  It  is 
a  license,  if  it  does  not  convey  the  entire  and  unqualified  mo- 
nopoly, or  an  undivided  interest  therein,  throughout  the  par- 
ticular territory  to  which  it  refers.1  Consistently  with  this 
definition,  the  following  have  been  held  to  constitute  licenses 
only  :  an  exclusive  right  to  make  and  sell,  but  not  to  use  : a 
an  exclusive  right  to  make  and  use,  but  not  to  sell  : '  an  ex- 


1  Gayler  v.  Wilder,  10  Howard, 
494,  1850  ;  Sanford  v.  Messer,  1 
Holmes,  149, 1872  ;  Hill  u.Whitcornb, 
1  Holmes,  321,  1874. 

*  Hayward  v.  Andrews,  106  U.  8. 


673,  1882  ;  Dorsey  Rake  Co.  v.  Mfg. 
Co.  12  Blatch.  203,  1874. 

8  Mitchell  v.  Hawley,  16  Wallace, 
544,  1872. 


CHAP.   XII.]  LICENSES.  217 

elusive  right  to  use  and  sell,  but  not  to  make  : '  an  exclusive 
right  to  make,  to  use,  and  to  sell  to  be  used,  for  certain  pur- 
poses, but  for  no  other.2  "  The  right  to  manufacture,  the 
right  to  sell,  and  the  right  to  use,  are  each  substantive  rights, 
and  may  be  granted  or  conferred  separately  by  the  paten- 
tee." 3  Any  one  or  two  of  these  rights  may  be  expressly  con- 
veyed by  a  patentee,  while  the  other  is  expressly  retained  by 
him.  In  the  absence  of  express  reservation,  however,  some 
licenses  are  extended  by  implication,  so  as  to  convey,  not  only 
what  they  expressly  cover,  but  also  some  other  right  which 
is  necessary  to  the  full  enjoyment  of  the  right  expressly  con- 
veyed. This  doctrine  is  not  in  conflict  with  the  rule  which 
prohibits  the  enlargement  of  an  instrument  in  writing  by  parol 
evidence  ;  because  that  rule  is  directed  only  against  the  admis- 
sion of  oral  evidence  of  the  language,  used  by  the  parties  in  a 
contract  which  was  reduced  to  writing.4  This  doctrine  relates 
to  the  legal  effect  of  the  language  actually  written,  and  is 
based  on  that  maxim  of  the  common  law  which  prescribes, 
that  any  one  granting  a  thing,  impliedly  grants  that,  without 
which,  the  thing  expressly  granted  would  be  useless  to  the 
grantee.5 

§  297.  An  express  license  to  make  specimens  of  a  patented 
thing,  is  without  value,  unless  it  implies  a  right  to  use,  or  a 
right  to  sell,  the  specimens  made  thereunder.  It  is  not  to  be 
presumed  that  a  right  so  nugatory  as  a  bare  right  to  make,  was 
the  only  subject  of  a  license  for  which  a  valuable  consideration 
was  paid.  Whether  the  implied  right,  which  accompanies 
such  a  license,  is  a  right  to  use  or  a  right  to  sell,  can  best  be 
determined  by  ascertaining  the  circumstances  which  surrounded 
the  giving  of  the  particular  license  in  question.  If  the  licensee 
was  engaged  in  a  business  which  made  it  convenient  for  him 
to  use  the  thing  involved,  then  the  right  to  use  will  be  implied 
in  preference  to  the  right  to  sell,  because  it  is  the  more  natural 

1  Hamilton      v.      Kingsbury,      17  1873.                                      • 

Blatch.  265,  1879.  4  Greenleaf  on  Evidence,  Section 

4  Gamewell     Telegraph     Co.     v  277. 

Brooklyn,  14  Fed.  Hep.  255,  1882.  6  Steam  Stone  Cutter  Co.  v.  Short- 

3  Adams  v.  Burke,  17  Wallace,  456,  sleevea,  16  Blatch.  382,  1879. 


218  LICENSES.  [CHAP.  xii. 

implication  in  such  a  case.  On  the  other  hand,  if  the  licensee 
had  no  occasion  to  use  the  thing  in  view,  but  was  engaged  in 
making  and  selling  similar  things,  for  the  use  of  others,  then  a 
right  to  sell  will  be  implied  from  a  right  to  make. '  Rights  to 
both  use  and  sell  will  not  be  implied  from  an  express  license  to 
make,  because  only  one  of  those  rights  is  necessary  to  the  bene- 
ficial enjoyment  of  such  a  license.  An  express  license  to  make 
specimens  of  a  particular  thing  does  not  impjy  a  license  to  use 
a  particular  patented  machine  for  that  purpose,  even  where 
the  patent  on  that  machine  was  owned  by  the  licensor,  at  the 
time  of  the  license,  and  even  where  that  machine  was  then 
the  best-known  means  of  making  the  thing  licensed." 

§  298.  An  express  license  to  use  a  limited  or  unlimited 
number  of  specimens  of  a  patented  article,  implies  a  right  to 
make  those  specimens,  and  to  employ  others  to  make  them, 
and  will  protect  those  others  in  making  them  for  the  use  of 
the  licensee.3  If  the  license  to  use,  covers  a  greater  length 
of  time  than  one  specimen  of  the  thing  to  be  used  will  last ; 
then  there  is  an  implied  right  in  the  licensee  to  repair  or  to 
rebuild  that  specimen,  or  to  replace  it  by  another  specimen 
made  or  purchased  for  that  purpose.4 

§  299.  An  express  license  to  sell  specimens  of  a  patented 
thing,  does  not  imply  any  right  to  make  those  specimens, 
because  it  is  to  be  presumed  that  they  may  be  obtained  by 
purchase,  and  because  no  person  requires  any  license  to  enable 
him  to  lawfully  buy  an  article  covered  by  any  patent.  But 
a  license  to  sell  does  imply  that  a  right  to  use  and  to  sell  again 
shall  be  conferred  on  the  vendees  of  the  licensee,  for  otherwise 
no  persons  would  buy  except  for  exportation,  and  sales  for 
exportation  are  seldom  sufficiently  practicable  to  raise  a  pre- 
sumption that  they  alone  were  contemplated  by  the  parties  to 
a  license  to  sell. 

1  Steam  Cutter  Co.  v.  Sheldon,  10  4  Wilson  v.  Stolley,  4  McLean,  275, 

Blatch.  8,  1872.  1847 ;  Bicknell  v.  Todd,  5  McLean, 

*  Troy  Nail  Factory  v.  Corning,  14  236,  1851  ;  Woodworth  v.  Curtis,  2 

Howard,  193,  1852.  Woodbury  &  Minot,  524, 1847 ;  Steam 

3  Steam  Stone  Cutter  Co.  v.  Short-  Cutter  Co.  u.  Sneldon,  10  Blatch.  8, 

sleeves,  16  Blatch.  381,  1879.  1872. 


CHAP.  XII.]  LICENSES.  219 

§  300.  A  license  to  make  and  use  does  not  authorize  any  sale 
of  the  thing  so  made,  nor  authorize  any  purchaser  of  that 
thing  to  use  the  same.1  Nor  does  a  sale,  coupled  with  an  ex- 
press license  to  use.  give  any  right  to  use  after  the  license  has 
been  forfeited.2  The  purchaser  of  a  patented  thing  gets 
no  other  right  to  use  it  than  such  right  as  the  seller  had  an  ex- 
press or  an  implied  right  to  convey.3  And  the  purchaser  of 
a  thing  which  is  useful  only  in  producing  a  patented  article, 
gets  thereby  no  right  to  use  his  purchased  thing  for  that  pur- 
pose.4 

§  301.  A  license  to  make  and  sell,  or  a  license  to  use  and 
sell,  implies  a  right  in  the  purchaser  to  use,  and  to  sell  again, 
the  thing  thus  lawfully  sold  to  him.  When  a  specimen  of  a 
patented  invention  is  sold  with  the  authority  of  the  owner  of 
the  patent  which  covers  it,  and  without  any  restriction  on  the 
ownership  or  use  of  the  thing  conveyed,  then  that  specimen 
passes  out  of  the  exclusive  right  which  is  secured  by  the  patent, 
and  may  be  used  as  long,  or  sold  as  often,  as  though  it  had 
never  been  subject  to  a  patent.5  The  same  result  also  follows 
from  a  sheriff's  sale  of  a  patented  article,  where  that  sale  was 
made  in  pursuance  of  an  execution,  issued  against  the  owner 
of  the  patent  right,  and  lawfully  levied  on  that  article,  as  the 
property  of  that  owner.'  But  no  person  acquiring  the  owner- 
ship of  mutilated  portions  of  a  specimen  of  a  patented  thing, 
can  lawfully  reconstruct  that  specimen  by  adding  the  missing 
parts,  and  still  less  can  he  lawfully  use  or  sell  the  entire  article 
when  reconstructed.7 

§  302.  Express  licenses  which,  if  unrestricted,  would  convey 

1  Wilson  v.  Stolley,  4  McLean,  277,  Co.  22  Howard,  217,  1859  ;  Adama 

1847.  v.  Burke,  17  Wallace,  453,  1873  ;  Pa- 

8  Wortendyke  v.  White,  2  Bann.  &  per-Bag  Cases,  105  U.  S.  771,  1881  ; 

Ard.  25,  1875.  McKay  v.  Wooster,  2  Sawyer,  373, 

3  Chambers  v.  Smith,  5  Fisher,  14,  1873  ;  May  v.  Chaffee,  2  Dillon,  385, 
1870.  1871  ;  Detweiler  v.  Voege,  8   Fed. 

4  Stevens  v.  Cady,  14  Howard,  528,  Rep.  600,  1881. 

1852  ;  Stevens  v.  Gladding,  17  How-  «  Wilder    v.  Kent,  15    Fed.  Eep. 

ard,  447,  1854.  217,  1883. 

6  Bloomer  v.  McQnewaji,  14  How-  '  American  Cotton  Tie  Co.  v.  Si- 

ard,  539,  1852  ;  Chaffee   v.  Belting  rnons,  106  U.  S.    89,  1882. 


220  LICENSES.  [CHAP.  xn. 

implied  rights,  may  be  so  restricted  that  they  will  not  have  that 
effect.1  A  license  to  make  and  sell  may  be  so  restricted  that 
the  things  made  and  sold  under  it  cannot  be  lawfully  used  in 
certain  specified  parts  of  the  United  States  ;  or  so  restricted 
that  the  licensee  cannot  make  and  sell  the  patented  thing  any- 
where in  the  United  States,  with  intent  to  have  it  exported  to 
a  foreign  country.8  A  license  to  use  and  sell  may  likewise  be 
restricted  in  the  same  way.  A  license  to  make  and  use  may  be 
so  restricted  that  the  patented  thing  cannot  be  used  in  certain 
specified  parts  of  the  United  States,8  and  cannot  be  used 
anywhere  in  the  United  States,  during  certain  specified  spaces 
of  time.4 

§  303.  Licenses  may  be  written,  or  they  may  be  oral.  The 
former  have  no  advantage  over  the  latter,  except  that  they  can 
usually  be  proven  with  more  ease  and  more  certainty,  and  ex- 
cept that  the  latter  may  sometimes  be  invalid  because  obnox- 
ious to  some  statute  of  frauds.  Those  exceptions,  however, 
constitute  an  abundant  reason  for  embodying  all  such  con- 
tracts in  plain  black  and  white  documents,  rather  than  com- 
mitting them  to  the  "  slippery  memory  of  man." 

§  304.  No  license  is  required  to  be  recorded,5  and  no 
record  of  a  license  affects  the  rights  of  any  person  ;  for  a 
license  is  good  against  the  world,  whether  it  is  recorded  or 
not.7  So  also,  if  a  license  is  embodied  in  two  papers,  one  of 
which  limits  the  scope  of  the  other,  an  assignee  of  the  broader 
document  will  take  subject  to  the  limitations  of  the  narrower, 
even  if  he  had  no  notice  of  its  provisions,  or  even  of  its  exist- 
ence. Nor  will  the  fact  that  the  broader  document  was  re- 
corded, and  the  narrower  one  unrecorded,  alter  or  affect  the 


1  Hamilton     v.     Kingsbury,     15  6  Brooks  v.  Byam,  2  Story,  525, 

Blatch.  64, 1878  ;  Hamilton  v.  Kings-  1843  ;  Consolidated  Fruit  Jar  Co.  v. 

bury,  17  Blatch.  264,  1879.  Whitney,  2  Bann.  &  Ard.  38,  1875  ; 

8  Dorsey  Bake  Co.  v.  Mfg.  Co.  12  Buss  v.  Putney,  38  N.  H.  44,  1859. 

Blatch.  204,  1874.  •  Chambers  v.  Smith,  5  Fisher,  14, 

»  Wicke  v.  Kleinkneoht,  1  Bann.  &  1870. 

Ard.  608.  1874.  '  Farrington  v.  Gregory,  4  Fisher, 

4  Mitchell  v.  Hawley,  16  Wallace,  221,  1870. 
, 1872, 


CHAP.   XH.J  LICENSES.  221 

operation  of  this  rule.1  It  follows,  that  where  two  licenses 
conflict,  the  first  must  prevail  even  though  the  taker  of  the 
second,  had  no  notice  of  the  existence  of  the  first ;  and  it  also 
follows  that  any  license  will  prevail  as  against  the  claims  of 
any  subsequent  assignee  or  grantee  of  the  patent  right  in- 
volved.9 

§  305.  A  license  from  one  of  several  owners  in  common  of 
a  patent  right,  is  as  good  as  if  given  by  all  those  owners  ;  * 
and  a  license  given  to  one  of  several  joint  makers  or  users  of  a 
patented  thing  is  as  good  as  if  given  to  all,  if  the  licensor  gives 
it  with  the  understanding  that  the  thing  licensed  to  be  done  is 
to  be  done  jointly,  or  is  to  be  done  by  the  express  licensee  on 
behalf  of  the  other  party." 

§  306.  The  construction  of  a  license  in  writing,  depends 
upon  the  same  general  rules  as  the  construction  of  other 
written  contracts.5  For  example,  it  is  to  be  construed  in  the 
light  of  the  circumstances  which  surrounded  its  execution.* 
Accordingly,  where  the  owner  of  several  patents  licenses  a 
person  to  make,  use  or  sell  a  particular  class  of  things  which,  if 
made,  used  or  sold  without  a  license,  would  infringe  all  those 
patents,  then  that  license  confers  a  right  under  them  all.7 

§  307.  No  warranty  of  validity  of  the  letters  patent  is 
implied  in  any  license  given  thereunder,  and  unattended 
proof  of  invalidity  is  therefore  no  defence  to  any  suit  for 
promised  royalties.8  As  long  as  a  licensee  continues  to  enjoy 
the  benefit  of  the  exclusive  right,  he  must  pay  the  royalty 
which  he  promised  to  pay,  and  he  cannot  escape  from  so 


1  Hamilton     v.      Kingsbury,      17  6  Burdell  v.  Denig,  92  U.  S.  722. 
Blatch.  264  and  460,  1880.  1875. 

2  Continental  Windmill  Co.  v.  Em-  7  Day  v.  Stellman,  1  Fisher,  487, 
pire  Windmill   Co.   8  Blatch.    295,  1859. 

1871.  *  Birdsall  v.  Perego,  5  Blatch.  251, 

3  Dunham  v.  Eailroad  Co.  7  Bis-  1865  ;  Sargent  v.  Larned,  2  Curtis, 
sell,  224,  1876.  340,  1855  ;  Marsh  v.  Dodge,  4  Hun, 

4  Bigelow  v.  Louisville,  3  Fisher,  (N.  Y.)  278,  1875  ;  Bartlett  v.   Hol- 
603,  1869.  brook.   1   Gray  (Mass.),   118,  1854  ; 

5  Witherell  v.  Zinc  Co.  6  Fisher,  Marston  v.   Sweet,    66  N.  Y.,   207, 
50,  1872.  1876. 


LICENSES.  [CHAP.  xn. 

doing  by  offering  to  prove  the  patent  to  be  void.1  But  a 
license  does  imply  that  the  licensee  shall  not  be  evicted  from 
its  enjoyment,  and  such  an  eviction  is  a  defence  to  a  suit  for 
royalties  accruing  after  it  occurred." 

Such  an  eviction  occurs  whenever  the  patent  is  adjudged 
void  in  an  interference  suit  prosecuted  in  equity  in  pursuance 
of  Section  4918  of  the  Revised  Statutes.  In  one  case  it  was 
held  that  such  an  eviction  occurs  whenever  the  Patent  Office 
decides  against  the  patent,  in  an  interference  between  it  and 
an  application  filed  after  it  was  granted.3  That  holding  was 
wrong,  because  it  was  based  on  the  statement  that  the  decision 
of  the  Patent  Office,  in  the  interference  case,  rendered  the  un- 
successful patent  void.  That  statement  was  entirely  errone- 
ous ;  for  that  result  can  only  be  obtained  by  an  action  in 
equity  under  Section  4918  of  the  Revised  Statutes.4  The 
decision  of  the  New  York  Court  of  Appeals  in  Peck  v.  Col- 
lins,* was  cited  as  the  authority  for  that  statement  ;  but  on  turn- 
ing to  Peck  v.  Collins,  we  find  that  it  was  the  surrender  of  the 
patent  that  annulled  it,  and  the  Supreme  Court  of  the  United 
States  so  decided,  when  the  case  reached  that  tribunal.8  Such 
eviction  will  also  occur,  whenever  the  patent  is  repealed,  by 
the  decree  of  a  court  in  which  an  action  is  brought  by  the 
United  States  for  that  purpose.  This  statement  is  ventured  on 
the  analogy  of  what  was  meant  to  be  decided  in  the  case  of 
Marston  v.  Swett  ;  namely,  that  a  licensee  is  evicted  from  the 
enjoyment  of  his  license  whenever  the  patent  is  judicially  an- 
nulled. Such  eviction  also  occurs,  whenever  the  licensee  is  en- 
joined from  acting  under  it,  at  the  suit  of  the  owner  of  a  senior 
patent ; T  and  by  parity  of  reasoning,  it  occurs  whenever  a 
judgment  or  decree  is  obtained  by  the  owner  of  a  senior 

1  Burr  v.  Dnryee,   2  Fisher,  285,  Book  Sewing  Machine  Co.  v.  Steven- 

1862.  son,  11  Fed.  Hep.  155,  1882. 

1  White  v.  Lee,  14  Fed.  Rep.  791,  «  Pecku.  Collins,  70N.Y.  376, 1877. 

1882.  « Peck  v.  Collins,  103  U.  S.  664, 

1  Marston  v.  Sweet,  82  N.  Y.  526,  J880. 

1880.  i  Pacific  Iron  Works  v.  Newhall, 

*  Union  Paper-Bag  Machine  Co.  v.  34  Connecticut,  67,  1867. 
Crane,  1  Holmes,  429,  1874  ;  Wire 


CHAP.   XII.]  LICENSES. 

patent,  against  the  licensee  for  an  infringement  which  con- 
sisted of  acting  under  the  license.  Such  an  eviction  will  also 
probably  be  held  to  occur  whenever  the  patent  is  defied  by 
unlicensed  persons,  so  extensively  and  so  successfully  as  to 
deprive  the  licensee  of  the  benefit  of  his  share  in  the  exclusive 
right  which  it  was  supposed  to  secure. 

§  308.  Forfeiture  of  a  license  does  not  follow  from  the  single 
fact  that  the  licensee  has  broken  some  covenant  which  was 
made  by  him  when  accepting  the  license  ;  unless  the  parties 
expressly  agreed  that  such  a  forfeiture  should  follow  such  a 
breach.1  And  even  where  such  an  agreement  is  made,  it  will 
not  always  be  enforced.  For  example,  non-payment  of  royalty 
on  the  very  day  it  becomes  due,  will  not  work  a  forfeiture,  if 
that  non-payment  arose  from  lack  of  certainty  relevant  to  the 
place  of  payment,  and  from  lack  of  demand  from  the  licensor." 
Nor  will  forfeiture  of  a  license  result  from  the  fact  that  the 
licensee  has  infringed  the  patent  by  doing  acts,  with  the  inven- 
tion, which  were  unauthorized  by  the  license.  The  license 
will  not  protect  him  in  such  doings,  but  it  will  continue  to 
protect  him  in  doing  the  acts  which  it  did  authorize.3  Indeed 
forfeitures  are  not  favored  by  the  law  ;  and  courts  are  always 
prompt  to  seize  upon  any  circumstance  which  indicates  an 
agreement  or  an  election  to  waive  one.* 

§  309.  Where  a  license  is  really  forfeited,  and  the  licensee 
continues  to  work  under  it  as  though  it  were  still  in  force,  the 
licensor  has  an  option  to  sue  him  as  an  infringer,  or  to  sue  him 
for  the  promised  royalties.4  If  he  selects  the  first  of  these 
remedies,  the  infringer  may  generally  interpose  any  defence 
that  he  could  have  set  up  in  the  absence  of  a  license.'  If 
there  is  an  exception  to  this  rule,  that  exception  exists  where 

1  White  v.  Lee,  5  Bann.  &  Ard.  572,  5  Woodworth   v.  "Weed,  1  Blatch. 
1880.  166,   1846  ;   Cohn   v.  Kubber   Co.   3 

2  Dare    v.  Boylston,  6   Fed.  Rep.  Bann.  &  Ard.  572,  1878  ;  Union  Mfg. 
493,  1880.  Co.  v.  Lounsbury,  42  Barbour,  (N.  Y.) 

3  Wood   v.   Wells,   6   Fisher,   383,  125,  1864. 

1873  ;  Steam  Cutter  Co.  v.  Sheldon,  «  Woodworth  v.  Cook,  2  Blatch. 

10  Blatch.  1,  1872.  160,  1850  ;  Burr  v.  Duryee,  2  Fisher, 

4  Insurance  Co.   v.  Eggleston,  96  283,  1862. 
U.  8.  572,  1877. 


224  LICENSES.  .         [CHAP.  xn. 

the  license  contained  an  agreement  on  the  part  of  the  licensee 
not  to  contest  the  validity  of  the  patent.  Whether  or  not 
there  is  such  an  exception  to  the  general  rule,  has  never  yet 
been  settled,  though  it  is  likely  to  be  decided  at  an  early  day.1 
The  question  seems  to  be  whether  a  forfeited  contract  is  bind- 
ing upon  the  party  that  suffered  the  forfeiture  ;  and  if  so, 
whether  a  party  can  make  a  valid  contract  to  omit  a  legal 
defence  when  brought  into  court  in  response  to  the  suit  of 
another  party. 

§  310.  No  license  is  assignable  by  the  licensee  to  another, 
unless  it  contains  words  which  show  that  it  was  intended  to  be 
assignable."  The  most  suitable  phrase  with  which  to  express 
such  an  intention,  would  include  the  word  "  assigns  ;"  but  in 
one  case  it  was  held  that  the  words  "  legal  representatives" 
would  answer  the  purpose,  because  the  license  fairly  indicated 
that  the  parties  understood  that  phrase  to  include  "  assigns" 
as  well  as  ' '  executors  or  administrators. ' ' 3  But  even  unas- 
signable licenses  may  sometimes  be  invoked  by  persons  who 
are  not  exactly  identical  with  the  licensees.  A  railroad  com- 
pany which  was  formed  by  the  consolidation  of  prior  railroad 
companies,  may  invoke  the  licenses  which  were  given  to  either 
of  its  constituent  corporations  ;  because  the  consolidated  com- 
pany is  a  successor  rather  than  an  assignee  of  those  companies.4 
So  also,  a  license  to  a  corporation,  will  protect  a  receiver  who 
is  authorized  to  manage  its  business  during  its  embarrass- 
ments.* "Where  a  license  is  given  to  a  partnership,  composed 
of  several  persons,  and  where  that  partnership  is  dissolved, 
and  its  business  is  continued  by  one  of  the  partners,  that  part- 
ner is  entitled  to  that  license  ; '  but  a  license  to  one  person 
gives  no  right  to  any  partner  of  that  person  ;  and  if  it  author- 

1  Wooater  v.  Mfg.  Co.  23  Off.  Gaz.  a  Hamilton      v.      Kingsbury,      15 

2513,  1883.  Blatch.  69,  1878. 

»  Troy  Factory  v.  Corning,  14  How-  <  Lightner  v.  Railroad  Co.  1  Low- 

ard,  193,  1852  ;  Rubber  Co.  v.  Good-  ell,  338,  1869. 

year,  9  Wallace.  788,  1869  ;  Baldwin  6  Emigh  v.  Chamberlin,  2  Fisher, 

v.  Sibley,  1  Clifford,  150, 1858  ;  Searls  192,  1861. 

v.  Bonton,  12  Fed.  Rep.  143,  1882  ;  «  Belding  v.  Turner,  8  Blatch.  321, 

Bull   v.   Pratt,  1  Connecticut,    342,  1871. 
1815. 


CHAP.  XII.]  LICENSES.  225 

izes  the  licensee  to  act  only  at  a  particular  place,  it  will  not 
protect  any  doings  of  his  elsewhere.1  The  non-assignability 
of  a  license,  may  be  waived  by  the  licensor,  and  will  be  so 
waived  if  he  accepts  the  promised  royalty  from  the  assignee 
of  the  licensee  ; *  or  ratifies  the  transfer  of  the  licenpe,  by 
otherwise  treating  the  assignee  as  the  licensee  was  entitled  to 
be  treated.8 

Assignable  licenses  are  assignable  only  in  their  entirety, 
unless  they  expressly  authorize  their  assignment  in  parts,  and 
to  a  plurality  of  persons.4  The  purchaser  of  a  license,  takes 
it  subject  to  all  the  restrictions  connected  therewith,  whether 
he  has  notice  of  those  restrictions  or  not ; 6  and  subject  to 
liability  for  the  same  rate  of  royalty  for  his  doings,  that  the 
licensee  would  have  had  to  pay  for  similar  acts  ;  but  not  sub- 
ject to  any  royalty,  or  other  money,  due  from  the  licensee  to 
the  licensor,  at  the  time  of  the  assignment  of  the  license.8 

§  311.  Purely  implied  licenses  may  arise  from  the  conduct 
of  patentees  and  grantees  of  patents,  or  from  recoveries  by 
them,  of  profits  or  damages  for  certain  classes  of  infringe- 
ments. Many  of  the  rules  which  have  thus  far  in  this  chap- 
ter, been  stated  and  explained  in  connection  with  purely  ex- 
press licenses,  and  in  connection  with  express  licenses  having 
implied  incidents  ;  are  also  applicable  to  licenses  which  are 
purely  implied.  Little  or  nothing  remains  to  be  said  about 
the  latter,  except  to  state  the  classes  of  circumstances  out  of 
which  they  are  found  to  spring. 

§  312.  Implied  licenses,  from  conduct  of  owners  of  patent 

rights,  may  arise  out  of  any  one  of  a  considerable  number  of 

classes  of  facts  ;  but,  when  analyzed,  those  facts  will  probably 

always  be  found  to  thus  operate  by  virtue  of  the  doctrines 

of  acquiescence,   or  the  doctrines  of    estoppel.     Where  the 

owner  of  a  patent  right  acquiesces  in  the  doings  of  one  who 

1  Rubber  Co.  v.  Goodyear,  9  Wai-      1843.     Consolidated  Fruit  Jar  Co.  v. 

lace,  788,  1869.  Whitney,  1  Bann.  &  Ard.  356,  1874. 

8  Bloomer  v.  Gilpin,  4  Fisher,  55,  6  Chambers  v.  Smith,  5  Fisher,  12, 

1859.  1870. 

3  Hammond  v.  Organ  Co.  92  TJ.  S.          6  Goodyear  u.  Rubber  Co.  3  Blatch. 
724,  1875.  449,  1856. 

4  Brooks  v.   Byam,  2  Story,   545, 


226  LICENSES.  [CHAP.  xn. 

makes,  uses  or  sells  specimens  of  the  patented  invention,  and 
where  that  owner  also  accepts  partial  compensation  for  such 
doings,  a  license  will  be  implied  unless  the  case  also  presents 
other  facts  which  negative  such  an  implication.1  Payment 
of  full  compensation  would  be  a  still  more  convincing  ground 
upon  which  to  base  an  implied  license  ;  and  such  a  license 
may  be  based  on  a  clear  case  of  acquiescence,  even  if  no 
payment  whatever  is  proven  to  have  as  yet  been  actually 
received.  But  acquiescence  in  unpaid-for  use,  does  not 
always  imply  that  no  compensation  is  to  be  expected.  Where 
the  user  knew  of  the  patent,  and  the  patentee  knew  of  the 
use,  and  did  not  object  thereto  ;  it  is  more  reasonable  to  im- 
ply an  agreement  for  a  quantum,  meruit,  than  to  imply  that 
the  patentee  donated  the  use  of  his  invention  to  the  user,  or 
to  imply  that  the  user  unlawfully  seized  upon  the  invention 
of  the  patentee.8  But  acquiescence  cannot  exist  without 
knowledge  of  the  thing  acquiesced  in,  nor  can  it  be  predicated 
even  of  knowledge  and  omission  to  interfere  with  the  doings 
of  the  infringer,  if  that  omission  is  fairly  accounted  for  on 
other  grounds. 

§  313.  The  estoppel  which  will  work  an  implied  license  is 
that  sort  which  is  most  accurately  denominated  estoppel  by 
conduct ;  and  all  of  the  following  elements  are  necessary  to  its 
existence.  1.  There  must  have  been  a  representation  or  a 
concealment  of  material  facts.  2.  The  representation  must 
have  been  made  with  knowledge  of  the  facts.  3.  The  party 
to  whom  it  was  made  must  have  been  ignorant  of  the  truth  of 
the  matter.  4.  It  must  have  been  made  with  the  intention 
that  the  other  party  should  act  upon  it.  5.  The  other  party 
must  have  been  induced  to  act  upon  it.8  6.  That  act  must 
be  hurtful  to  the  party  acting,  in  case  the  estoppel  is  not 
enforced  in  his  favor.4 

i  Blanchard  v.  Sprague,  1  Clif.  297,  18,  p.  437. 

1859.  '  Railroad  Co.  v.  Duboise,  12  Wal- 

1  McKeever   v.  United   States,   23  lace,  64,  1870  ;  Hill  v.  Epley,  31  Penn. 

Off.  Gaz.  1527,  1883.  State,  334,  1858  ;    Dezell  v.  Odell,  3 

'M'Millin   v.   Barclay,    5   Fisher,  Hill  (N.  Y.),  215,  1842  ;  Patterson  v. 

201,  1871  ;  Bigelow  on  Estoppel,  Ch.  Lyttle,  11  Penn.  State,  53,  1849. 


CHAP,  xn.]  LICENSES.  227 

If  the  owner  of  a  patent  right  were  to  explain  the  patented 
invention  to  a  person  ignorant  of  the  patent  ;  and  were  to 
advise  him  to  make,  to  use,  or  to  sell  a  specimen  of  that 
invention,  with  intent  to  induce  him  to  infringe  the  patent  un- 
knowingly ;  and  if  that  person  were  thereby  induced  to  incur 
expense  in  infringing  or  in  preparing  to  infringe  that  patent, 
then  it  would  follow  from  these  doctrines  of  estoppel,  that 
an  implied  license  would  result  to  a  person  thus  misled.  The 
same  result  would  follow,  if  the  owner  of  a  patent  right  were 
to  conceal  the  existence  of  the  patent  from  a  person  who,  to 
his  knowledge,  was  about  to  infringe  it  unknowingly  ;  if  that 
concealment  were  done  with  intent  to  allow  that  person  to 
infringe  ;  and  if  that  person  incurred  expense  in  infringing  or 
in  preparing  to  infringe,  which  he  would  not  have  incurred  if 
he  had  known  of  the  patent.  So  also,  where  a  person  sells  a 
patented  machine  to  another  without  having  any  interest  in  or 
under  the  patent,  he  will  be  estopped  from  prosecuting  his  ven- 
dee for  infringement  on  the  basis  of  any  after  acquired  title. 

§  314.  An  actual  recovery  of  money  in  an  infringement  suit 
for  unlicensed  making  and  selling  a  specimen  of  a  patented 
thing,  operates  as  an  implied  license  to  the  purchaser  of  that 
specimen,  to  use  it  to  the  same  extent  that  he  could  lawfully 
have  done,  if  the  infringer  had  been  licensed  to  make  it  and 
to  sell  it.1  But  to  effect  such  a  result,  something  more  than 
a  judgment  or  decree  is  necessary.  There  must  be  a  satisfac- 
tion of  that  decree  or  judgment.5  Recoveries  based  on 
unlicensed  use  of  a  patented  process  or  thing,  are  necessarily 
confined  to  such  use  as  occurred  before  the  suit  was  brought, 
if  the  action  be  at  law,  or  to  such  as  occurred  before  the  final 
decree,  if  the  action  is  in  equity  ;  and  it  therefore  follows 
that  no  such  recovery  can  operate  to  license  any  one  to  con- 
tinue such  use,  or  to  begin  a  new  use  of  that  thing  or  that 
process.8 

1  Spaulding  v.  Page,  1  Sawyer,  709,  1140,  1881. 

1871  ;     Perrigo     v.    Spaulding,   13  *  Gilbert  and  Barker  Mfg.  Co.  v. 

Blatch.  391,  1876  ;  Steam  Stone  Cut-  Bussing.  12  Blatch.  426,  1875. 

ter  Co.   v.  Mfg.    Co.  17  Blatch.  31,  a  Suffolk  Co.  v.  Hayden,  3  Wallace, 

1879  ;  Booth  v.  Seevers,  19  Off.  Gaz.  315,  1865. 


CHAPTER  XIII. 

INTERFERING  PATENTS. 
315.  Causes    and  characteristics  of  I  Commissioner  of  Patents  on  a 


interfering  patents. 

316.  Actions  in  equity  between  inter- 
fering patents. 

317.  The  proper  issue  in  such  ac- 
tions. 

318.  The  force  of  the  decision  of  the 


prior  interference  in  the  Patent- 
Office. 

319.  Injunctions  in  interference  ac- 
tions. 

320.  The  proper    decrees    in    snch 
actions. 


§  315.  PATENTS  which  contain  one  or  more  claims  in  common, 
are  interfering  patents.  All  but  one  of  several  such  patents 
are  necessarily  void,  as  to  the  interfering  claim  or  claims ; 
though  all  may  be  valid  as  to  the  other  claims  which  they 
respectively  contain. '  There  are  two  causes  which  lead  to  the 
granting  of  interfering  claims.  Such  claims  may  be  granted 
because  of  inadvertence  or  erroneous  judgment  on  the  part  of 
the  Patent  Office  ;  and  they  may  be  granted  because  applica- 
tions do  not  always  happen  to  be  made  in  the  order  of  inven- 
tion. The  first  cause  may  operate  when  the  Patent  Office 
examiners  overlook  an  anticipating  patent,  while  examining 
an  application  in  point  of  novelty  ;  or  when  they  form  an 
erroneous  opinion  that  an  existing  patented  claim  is  substan- 
tially different  from  the  claim  under  immediate  inspection. 
The  second  cause  may  operate  when  one  person  who  is  an 
original,  but  not  the  first,  inventor  of  a  particular  thing, 
applies  for  and  receives  a  patent  thereon,  before  another 
person,  who  is  an  original  and  the  first  inventor  of  that  thing, 
files  his  application  in  the  Patent  Office.  Under  such  circum- 
stances, it  is  the  duty  of  the  Commissioner  to  declare  an  inter- 
ference between  the  patent  and  the  unpatented  application, 

1  Gold  and  Silver  Ore  Co.  v.  Disintegrating  Ore  Co.  6  Blatch.  311,  1869. 


CHAP.  Xin.]  INTERFERING    PATENTS.  229 

and  if,  in  that  interference  proceeding,  the  later  applicant  is 
adjudged  to  be  the  prior  inventor,  and  if  the  application 
is  otherwise  unobjectionable,  it  becomes  the  duty  of  the 
Commissioner  to  grant  him  a  patent.1  The  Commissioner  has 
however  no  authority  to  recall  the  patent  theretofore  granted 
to  the  wrong  party.  That  patent  can  be  set  aside  by  the 
courts  alone. 

§  316.  A  suit  in  equity  is  the  prescribed  proceeding  by 
means  of  which  the  interfering  claims  of  two  or  more  patents 
may  be  adjudicated  upon,  in  point  of  comparative  novelty.1 
The  complainant  in  such  a  suit  may  be  the  patentee  or  assignee 
of  either  of  the  interfering  patents,  or  a  grantee  or  licensee 
thereunder  ;  for  all  of  these  persons  fall  within  the  category 
mentioned  in  the  statute  :  a  category  which  includes  every 
person  interested  in  any  one  of  the  patents,  or  in  the 
working  of  the  invention  claimed  under  any  of  them.  The 
defendant  may  be  any  patentee,  assignee  or  grantee  who  owns 
an  interest  in  another  of  the  interfering  patents  ;  for  all  such 
persons  are  "  owners"  thereof.  It  is  neither  necessary  that 
all  the  possible  complainants  should  join  in  a  suit,  nor  that  all 
the  possible  defendants  should  be  brought  before  the  court. 
The  statute  provides  that  no  decree  entered  in  such  a  suit  shall 
affect  either  patent,  except  so  far  as  the  patent  affected  is 
owned  by  parties  to  the  suit,  or  by  persons  deriving  title  under 
them  after  the  rendition  of  such  decree.  The  proper  practice 
is  to  make  all  persons  complainants  who  have  a  right,  and  who 
are  willing,  to  be  so  made  ;  and  to  make  all  persons  defendants 
who  are  liable  to  be  made  so,  and  who  reside  or  may  be  found 
in  the  district  where  the  suit  is  brought.  No  person  who 
neither  resides  nor  is  found  in  that  district  can  be  made  a  party 
defendant  to  a  suit  of  this  kind,  any  more  than  to  any  other 
equity  suit  in  a  Federal  court.3 

A  bill  cannot  be  filed  in  an  interference  suit,  until  the  com- 
plainant's patent  is  actually  granted  ;4  and  until  the  defend- 


1  Revised  Statutes,  Section  4904.         Miller,  1  McCrary,  31,  1880. 

*  Revised  Statutes,  Section  4918.  4  Hoeltge  v.  Hoeller,  2  Bond,  388, 

*  Liggett  &  Myers  Tobacco  Co.  v.      1870. 


230  INTERFERING   PATENTS.  [CHAP. 

ant's  patent  is  actually  granted,  there  is  no  occasion  for  such 
a  bill.  No  cross-bill  is  either  necessary  or  proper  in  a  suit  of 
this  kind,  because  the  statute  provides  that  in  such  a  suit,  the 
court  may  adjudge  either  of  the  patents  to  be  void.  The  de- 
fendant may  therefore  obtain  all  rightful  affirmative  relief 
without  becoming  himself  a  complainant  in  a  cross-bill.' 

§  317.  There  is  but  one  issue  of  fact  in  an  interference  suit. 
That  issue  relates  to  the  dates  wherein  the  interfering  matter 
was  respectively  invented  by  the  interfering  inventors.  If 
the  complainant's  invention  is  the  older,  the  defendant's 
interfering  claim  is  void  for  want  of  novelty.  And  the  com- 
plainant's interfering  claim  is  void  for  want  of  novelty, 
if  the  defendant's  invention  is  found  to  antedate  the 
other.  Evidence  that  a  third  person  anticipated  both  inven- 
tors, is  not  admissible  in  an  interference  suit ;  because  such 
evidence  is  not  relevant  to  any  decree  the  court  has  jurisdic- 
tion to  make  in  such  a  case.  Such  evidence,  if  acted  upon, 
would  result  in  a  decree  voiding  both  patents.  The  statute 
authorizes  a  decree  voiding  either  patent,  but  authorizes  none 
voiding  both.  A  decree  voiding  one,  is  not  a  decree  implied- 
ly  validating  the  other.  Such  a  decree  leaves  the  successful 
patent  open  to  every  possible  objection  save  want  of  novelty  ; 
and  leaves  it  open  to  every  possible  objection  of  want  of 
novelty,  save  such  as  might  otherwise  have  been  based  on  the 
existence  of  the  unsuccessful  patent  ;  and  leaves  it  open  also 
to  that  objection,  as  between  all  persons,  except  the  parties 
to  the  interference  suit  and  their  privies.  If  a  defendant  in 
an  interference  suit  may  attack  the  complainant's  patent  on 
the  ground  that  a  third  person  anticipated  the  complainant's 
invention,  he  may,  with  equal  propriety  attack  it  on  any  or  all 
of  the  numerous  other  grounds  upon  which  patents  may  be 
attacked  in  point  of  validity.  To  suppose  that  the  statute  of 
interference  suits  authorizes  any  such  extended  litigation,  is 
apparently  to  misapprehend  its  purpose  and  misconstrue  its 
language.  These  views  are  ventured,  notwithstanding  one 
district  judge  has  decided  the  point  in  the  opposite  direction.1 

1  Lockwood  v.  Cleaveland,  6  Fed.          *  Foster  v.  Lindsay,  3  Dillon,  126, 
Kep.  721,  1881.  1875. 


CHAP.  XIII.]  INTERFERING   PATENTS.  231 

§  318.  The  evidence  upon  which  interference  suits  are  de- 
cided, consists  of  the  best  evidence  on  the  question  in  is- 
sue. On  this  question  the  Commissioner's  decision  is  pinma 
facie  evidence  in  favor  of  the  patent  last  granted  ;  because 
he  would  not  have  granted  it  if  he  had  not  decided  it  to  be 
entitled  to  priority  in  point  of  date  of  invention. l  The  Com- 
missioner's decision  is  not  conclusive  ;  because,  if  it  were,  the 
court  would  have  no  function  but  to  enforce  that  decision  ; 
and  because,  if  it  were  conclusive  in  law,  it  would  bind  nobody 
but  the  senior  patentee.  In  such  a  case  the  operation  of  a 
decree  based  on  a  Commissioner's  decision,  if  wrong  in  fact, 
would  be  to  deprive  a  patentee  of  all  right  to  make,  use  or 
sell  the  thing  which  he  was  the  first  to  invent  and  the  first  to 
patent ;  and  to  throw  that  invention  open  to  all  the  residue  of 
the  world.* 

§  319.  Injunctions  are  not  expressly  authorized  by  the 
statute  which  provides  for  interference  suits.  Justice  N  ELSON 
once  decided  that  a  preliminary  injunction  could  be  granted 
in  such  a  case  on  the  ground  that  ' '  the  power  conferred  upon 
the  Circuit  Court  to  entertain  bills  in  equity,  in  controversies 
arising  under  the  Patent  Act,  is  a  general  equity  power,  and 
carries  with  it  all  the  incidents  belonging  to  that  species  of 
jurisdiction."  3  Justice  BLATCHFOED  was  of  counsel  for  defend- 
ant in  that  case,  and  was  its  reporter  ;  but  when  he  came  to 
the  bench  he  declined  to  follow  the  precedent,  saying,  "  I  am 
not  aware  of  any  principle  which  would  authorize  the  Court, 
in  a  suit  of  this  character,  to  restrain  a  defendant  from  bring- 
ing suits  on  his  patent,  before  that  patent  is  adjudged  to  be 
invalid."  Of  course  Justice  BLATCHFORD  was  aware  of  what 
Justice  NELSON  had  decided.  He  must  therefore  have  held 
that  the  reason  Justice  NELSON  gave  was  not  a  good  one  ; 
unless  there  is  a  substantial  difference  between  the  forms  of 
injunction  asked  for  in  the  two  cases.  The  injunction  prayed 
before  Justice  NELSON  was  that  the  defendant  be  restrained 

1  Wire  Book  Sewing  Machine  Co.  8  Potter  v.  Dixon,  5  Blatch.  165. 

v.  Stevenson,  11  Fed.  Rep.  155,  1882.  1863. 

s  Union  Paper-Bag  Machine  Co.  v.  4  Asbestos  Felting  Co.  v.  Salaman- 

Crane,  1  Holmes,  429,  1874.  der  Felting  Co.  13  Blatch.  454,  1876. 


232  INTERFERING    PATENTS.  [CHAP.  XIII. 

from  using  or  selling  liis  interfering  patent ;  and  the  injunc- 
tion prayed  in  the  other  case  was  that  the  defendant  be 
restrained  from  bringing  suits  upon  his  interfering  patent.  In 
both  cases  the  thing  sought  to  be  enjoined  was  an  attempted 
enjoyment  of  the  patented  right.  The  two  decisions  seem 
therefore  to  be  in  conflict,  and  the  law  upon  the  point  cannot 
be  said  to  be  settled. 

§  320.  The  hearing  of  an  interference  case  may  disclose 
that  there  is  no  interference  between  the  patents  before  the 
court ;  or  that  there  is  such  an  interference.  In  the  former 
event,  the  proper  decree  to  enter  is  one  dismissing  the  com- 
plainant's bill  ;  and  in  the  latter  event,  the  proper  decree  is 
one  adjudging  the  patent  issued  on  the  later  of  the  inventions, 
to  be  void,  so  far  as  it  secures  the  interfering  matter,  and  so  far 
as  the  title  of  the  parties  to  the  suit  extends.1  Such  a  decree 
should  be  entered  regardless  of  whether  the  patent  to  be 
voided  is  that  of  the  defendant  or  that  of  the  complainant. 
If  it  is  the  latter,  a  decree  merely  dismissing  the  complain- 
ant's bill  will  not  answer  the  purpose  ;  because  such  a  decree 
does  not  necessarily  involve  any  such  conclusion.8  It  may 
mean  only  that  there  is  no  interference  ;  or  it  may  merely 
mean  that  the  complainant  has  no  proper  title  to  the  patent 
which  he  invokes. 

1  Gilmore  v.  Golay,  3  Fisher,  522,          *  Tyler  v.   Hyde,    2  Blatch.   310, 
1869 ;    Sturges    v.    Van   Hagen,    6      1851. 
Fisher,  572,  1873. 


CHAPTER  XIV. 
REPEAL  OF  PATENTS. 


321.  Patents  obtained  by  fraud,  or 
granted  by  mistake. 

322.  Jurisdiction  of  equity  to  repeal 


patents  so  obtained  or  so  grant- 
ed. 
323.  Practice  in  such  cases. 


§  321.  PATENTS  and  reissues  may  sometimes  be  obtained  by 
fraud  ;  and  sometimes  be  granted  by  mistake.  The  facts 
which  constitute  the  fraud,  or  which  make  the  granting  a 
mistaken  one,  may  generally  be  interposed  as  one  of  the 
defences  to  an  infringement  suit ;  but  where  those  facts  are 
such  that  no  one  of  those  defences  can  be  based  upon  them, 
they  cannot  be  interposed  merely  because  they  constitute  a 
fraud,1  or  constitute  a  mistake.2  Nor  can  any  individual  bring 
any  action  to  repeal  or  otherwise  set  aside  a  patent,  on  any 
ground  of  fraud  ;  or  indeed  on  any  ground  whatever,  except 
that  of  an  interference.3  "Where  frauds  are  ingenious  enough 
to  keep  clear  of  all  known  defences  to  infringement  suits,  the 
wrongs  which  they  cause  are  without  a  remedy,  unless  the 
United  States  can  repeal  a  patent  which  its  officers  have 
fraudulently  been  induced  to  grant,  or  to  reissue.  So  also, 
where  a  patent  is  granted  by  mistake,  instead  of  being  re- 
fused, as  it  ought ;  and  where  the  ground  of  refusal  does  not 
constitute  ground  of  defence  to  a  suit  for  infringement  ;  the 
wrongs  which  such  a  mistake  will  occasion  must  be  remedied 
by  a  repeal  of  the  patent,  or  they  are  remediless. 

§  322.  Equity  has  jurisdiction  to  repeal  letters  patent  for 
land,  where  they  were  obtained  by  fraud,  or  issued  by  mistake  ; 


1  Railroad    Co.     v.    Duboise,    12 
Wallace,  64,  1870. 
*  Doughty  v.  West,  6  Blatch.  433, 


1869. 

3  Mowry  v.  Whitney,  14  Wallace, 
439,  1871. 


234  EEPEAL  OF  PATENTS.  [CHAP.  XTV. 

whenever  the  United  States  files  a  bill  stating  the  facts,  and 
praying  that  the  letters  may  be  annulled.1  This  doctrine  is 
equally  applicable  to  patents  for  inventions,  unless  the 
Supreme  Court  mistook  the  law,  when  concerting  its  obiter 
1  dictum  in  Mo  wry  v.  Whitney.3  Judge  SHEPLEY"  was  ap- 
parently of  opinion  that  the  Supreme  Court  did  deviate  on  that 
occasion  ;  and  in  an  obiter  dictum  of  his  own,  he  stated  his 
reasons  for  taking  the  opposite  view.8  Those  reasons  are  not 
without  weight ;  and  inasmuch  as  the  point  has  never  been 
adjudicated,  it  is  at  present  impossible  to  know  whether  any 
court  has  jurisdiction,  on  any  ground  of  fraud  or  mistake,  to 
repeal  letters  patent  for  inventions.  Assuming,  however,  that 
such  a  jurisdiction  does  inhere  in  some  class  of  courts,  it  is 
possible  to  outline  its  character  ;  and  to  base  that  outline 
upon  adjudicated  cases  of  undoubted  authority.  That  there- 
fore is  the  remaining  function  of  this  short  chapter. 

§  323.  A  bill  to  repeal  a  patent  must  be  filed  by  the  United 
States  ; '  acting  through  the  United  States  district  attorney  of 
the  district  wherein  it  is  filed  ;6  and  it  must  be  filed  in  the 
Circuit  Court  of  the  United  States  for  that  district ;"  and  be 
filed  before  the  expiration  of  the  patent  which  it  seeks  to 
repeal.7  No  citizen  has  any  power  to  compel  the  United 
States  or  the  district  attorney  to  file  such  a  bill  ;  or  to  control 
its  prosecution  after  such  a  bill  is  filed.8  The  filling  in  of  this 
outline  must  await  the  passage  of  time,  and  the  development 
of  jurisprudence  ;  if  indeed  the  whole  subject  of  repeal  of 
patents  does  not  require  to  be  founded  on  future  legislation. 

1  United  States  v.  Stone,  2  Wallace,  Chemical  Works,  2  Bann.  &  Ard.  308, 

535,  1864.  1876. 

*  Howry  v.  Whitney,  14  Wallace,  6  Revised  Statutes,  Section  629. 

440,  1871.  p.  9. 

3  Attorney-General    v.     Rumford  '  Bourne  v.  Goodyear,  9  Wallace, 
Chemical  Works,  2  Bann.  &  Ard.  308,  811,  1869. 

1876.  8New   York  &  Baltimore    Coffee 

4  Mowry  u.  Whitney,  14  Wallace,       Polishing  Co.  v.  New  York  Coffee 
440. 1871.  Polishing  Co.  9  Fed.  Rep.  580,  1881. 

&  Attorney-General     v.     Rumford 


CHAPTER  XV. 


QUI  TAM   ACTIONS. 


324.  Qui  tarn  actions,  defined  and 
described  as  they  exist  in  the 
patent  laws. 

825.  The  wrongs  which  are  the 
foundations  of  such  actions. 

326.  The  first  two  of  those  three 
classes  of  wrongs. 

327.  The  third  of  those  three  classes 
of  wrongs. 

328.  Wrongs  of  either  class  are  com- 
pleted   when    the    articles    are 
illegally    marked,   without    any 
subsequent  using  or  selling. 


329.  The  amount  of  the  recoverable 
penalty. 

330.  The    plaintiff    must    be     one 
natural  person. 

331.  The  forum  for  qui  tarn  actions. 

332.  The  form  of  the  suit,  and  the 
requisites  of   a   declaration,  in 
such  an  action. 

333.  Injunctions  to  restrain  the  com- 
mission of  wrongs  of  either  of 
the  first  two  classes. 

334.  Appeals  in  qui  tarn  cases. 


§  324.  THESE  are  certain  actions  at  law,  which  derive  their 
name  from  the  Latin  words  qui  tarn,  used  at  the  beginning  of 
the  declaration  in  such  an  action,  in  times  when  all  declara- 
tions were  written  in  the  Latin  language.  No  such  action 
was  known  to  the  common  law  of  England  ;  but  several  actions 
of  the  kind  have  long  been  prescribed  by  statute,  in  that 
country,  and  in  this.  Qui  tani  actions  relevant  to  patents  are- 
authorized  by  Section  4901  of  the  Revised  Statutes.  That 
statute  forbids  certain  classes  of  acts  ;  and  provides  that  who- 
ever commits  an  act  of  either  of  those  classes,  shall  be  liable 
to  a  penalty  of  not  less  than  one  hundred  dollars,  with  costs  ; 
and  that  any  person  may  sue  for  that  penalty,  in  any  Dis- 
trict Court  of  the  United  States  within  whose  jurisdiction 
the  offence  was  committed  ;  and  that  one  half  of  the  pen- 
alty, when  recovered,  shall  go  to  the  plaintiff,  and  the  other 
half  to  the  United  States. 

§  325.  The  forbidden  acts  are  :  1.  Unauthorized  marking, 
upon  any  patented  article,  of  the  name,  or  any  imitation  of  the 


236  QUI   TAM   ACTIONS.  [CHAP.  XV. 

name,  of  the  patentee.  2.  Unauthorized  marking,  upon  any 
patented  article,  of  the  word  "  patent"  or  "  patentee,"  or 
the  words  "  letters  patent,"  or  any  word  of  like  import,  with 
intent  to  imitate  or  counterfeit  the  mark  or  device  of  the 
patentee.  3.  Marking  upon  any  unpatented  article  the  word 
"  patent,"  or  any  word  importing  that  the  same  is  patented, 
for  the  purpose  of  deceiving  the  public. 

§  326.  The  first  two  of  these  three  classes  of  acts  are  injuri- 
ous to  the  public,  and  to  the  patentees.  They  are  injurious 
to  the  public  in  that  they  are  adapted  to  mislead  persons  into 
buying  and  using  articles  which  were  made  and  sold  in  viola- 
tion of  patents,  and  which  therefore  cannot  be  lawfully  used 
even  by  innocent  purchasers.  The  law  provides  that  those 
who  have  a  right  to  make  and  sell  patented  articles  shall 
mark  those  articles  with  the  word  "patented;"1  and  that 
other  persons  shall  not  so  mark  such  articles.'  When 
buying  anything  which  is  not  so  marked,  a  purchaser 
properly  concludes  that  it  is  not  patented,  and  that  he 
may  therefore  use  it  without  risk  of  a  suit  for  infringe- 
ment ;  and  when  buying  anything  that  is  so  marked,  the 
purchaser  concludes,  with  equal  propriety,  that  it  was  made 
and  sold  by  the  patentee  or  some  one  lawfully  authorized  by 
him,  and  that  therefore  it  may  be  lawfully  used  to  any  extent 
desired.  It  is  clear,  that  on  these  accounts,  the  first  two  of 
the  forbidden  acts  are  detrimental  to  public  security,  and 
therefore  opposed  to  public  policy.  The  same  acts  are  also 
injurious  to  patentees,  and  they  will  be  considered  in  that 
aspect  in  a  subsequent  section. 

§  327.  The  last  of  the  three  forbidden  classes  of  acts  is 
injurious  to  the  public,  in  that  it  is  adapted  to  mislead  persons 
into  an  opinion  that  they  have  no  right  to  make  and  use,  or 
make  and  sell,  other  specimens  of  the  thing  marked  as  being 
patented.  When  an  unpatented  thing  is  so  marked,  it  is  im- 
material whether  it  is  a  patentable  thing  or  not.*  This  point 
is  so  clear  that  it  would  not  be  thought  to  require  or  admit 

1  Revised  Statutes,  Section  4950.  »  Oliphant  v.  Salem  Flouring  Mills 

*  Revised  Statutes,  Section  4901.         Co.  5  Sawyer,  128,  1878. 


CHAP.  XV.]  QTH   TAM   ACTIONS.  237 

elaboration,  had  not  a  judge  in  one  case  expressed  a  contrary 
opinion.1  Wliether  a  thing  is  patentable  or  not  depends  on 
considerations  of  which  the  public  as  a  whole  are  necessarily 
ignorant.  They  may  therefore  be  deceived  by  seeing  the 
word  "  patented"  upon  an  unpatentable  unpatented  article,  as 
readily  as  by  seeing  the  same  word  on  a  patentable  unpatented 
article.  That  word  warns  them  not  to  copy  that  article. 
They  are  as  reluctant  to  disregard  that  warning  on  a  supposi- 
tion that  the  article  is  not  patentable,  as  they  are  on  the 
hypothesis  that  it  is  not  patented  ;  and  they  are  as  effectu- 
ally diverted  from  exercising  their  right  to  copy  it  in  the 
one  case  as  in  the  other. 

Intent  to  deceive  the  public  is  a  necessary  element  of  the 
forbidden  act  now  under  consideration  ;  and  that  intent  does 
not  exist  when  the  person  marking,  is  himself  mistaken 
relevant  to  his  right  so  to  mark  ;2  or  where  the  word  ' l  patent- 
ed" is  accompanied  by  other  words  or  characters  which 
indicate  that  the  article  was  once  the  subject  of  a  patent,  but 
that  the  patent  has  expired  at  the  time  of  the  marking.3 
Inasmuch  as  all  persons  are  presumed  to  intend  the  natural 
consequences  of  their  acts,  proof  of  an  act  which  was  adapted 
to  deceive  the  public,  is  sufficient  proof  of  the  intent  to  de- 
ceive, unless  the  doer  establishes  his  innocence  of  that  intent. 
The  burden  of  proof  therefore  lies  upon  the  defendant,  in  this 
particular.4 

§  328.  Proof  that  the  article  illegally  marked  patented  was 
afterward  sold,  or  was  otherwise  presented  to  the  notice  of  the 
public,  is  not  a  necessary  element  in  either  of  the  acts  which 
are  forbidden  by  the  statute  ;  but  proof  that  the  intent  to 
deceive  the  public  existed  when  the  marking  was  done  is  such 
an  element.  Accordingly,  if  a  person  illegally  marks  an  article, 
his  offense  is  complete,  and  is  not  condoned  by  a  subsequent 
omission  to  profit  by  that  offense  ;  but  where  a  person  marks 


1  United  States  v.  Morris,  2  Bond,  8  Wilson  v.  Mfg.  Co.  12  Fed.  Rep. 

27,  1866.  57,  1882. 

» Walker  v.  Hawxhurst,  5  Blatch.  4  Brig  Struggle  v.  United  States, 

494,  1867.  9  Cranch,  74,  1815. 


238  QUI   TAM   ACTIONS.  [CHAP.  XV. 

an  article  without  any  intent  to  deceive,  and  afterward  uses 
the  article  so  marked,  for  purposes  of  deception,  he  does  not 
violate  the  statute.1 

§  329.  The  penalty  prescribed  by  the  statute  for  either  of 
the  forbidden  acts  is  "  not  less  than  one  hundred  dollars  ;" 
and  Justice  CURTIS  well  decided  that  such  language  must, 
in  a  penal  statute  like  this,  be  strictly  construed,  and  that, 
when  so  construed,  it  authorizes  a  penalty  of  precisely  one 
hundred  dollars  and  no  more."  The  district  judge  in  the 
same  district,  in  a  later  case,  instructed  a  jury  to  assess  the 
"damages"  not  less  than  one  hundred  dollars  and  as  much 
more  as  they  thought  proper.3  That  instruction  was  not  ac- 
companied by  any  reasoning  on  the  subject,  and  was  apparently 
made  in  ignorance  of  the  elaborate  contrary  decision  of  Justice 
CURTIS.  The  latter  decision  may  therefore  safely  be  said  to 
embody  the  law  on  this  point. 

§  330.  The  plaintiff  in  a  qui  tarn  action  for  illegally  marking 
a  patented  or  unpatented  article,  may  be  any  "  person."  It 
was  decided  under  a  similar  statute  relevant  to  copyrights, 
that  a  plurality  of  persons  could  not  join  as  plaintiffs  in  an 
action  of  the  kind.6  The  language  of  that  copyright  statute 
was  identical  with  that  of  the  present  patent  statute  in  this 
particular  ;  and  the  same  good  reasoning  which  carried  the 
court  to  its  conclusion  in  the  copyright  case,  will  probably 
carry  any  court  to  the  same  conclusion  in  any  qui  tarn  action 
under  the  patent  statute.  The  person  who  sues  must  be  a 
natural  and  not  an  artificial  person  ;  and  he  must  sue  in  his 
own  name  and  not  in  that  of  the  United  States.' 

§  331.  Jurisdiction  in  qui  tarn  actions,  unlike  that  in  other 
kinds  of  patent  suits,  is  conferred  upon  District  Courts,  not  upon 
Circuit  Courts,  of  the  United  States,  and  is  conferred  upon 
the  particular  court  within  the  district  of  which  the  forbidden 

1  Nichols  v.  Newell,  1  Fisher,  647,  4  Revised  Statutes,  Section  4901. 

1853.  » Ferrett  v.  Atwill,  1  Blatch.  153, 

J  Stimpson  v.  Pond,  2  Curtis,  502,  1846. 
1855.  «  United  States  v.  Morris,  2  Bond, 

» Nichols  u.  Newell,  1  Fisher,  659,  27,  1866. 
1853. 


CHAP.  XV.]  QUI  TAM  ACTIONS.  239 

act  was  committed,  rather  than  upon  the  court  of  any  district 
within  which  the  defendant  resides  or  may  be  found.1  There 
is,  however,  another  section  of  the  Kevised  Statutes  which 
provides  that.  "All  pecuniary  penalties  and  forfeitures  may  be 
sued  for  and  recovered  either  in  the  district  where  they  accrue 
or  in  the  district  where  the  offender  is  found. "  * 

§  332.  The  proper  form  of  common  law  action,  in  qui 
tarn  cases,  is  that  of  debt.3  Inasmuch,  however,  as  no 
particular  form  is  prescribed  by  the  Federal  statute,  the  code 
forms  of  complaints  or  petitions  are  to  be  used  in  code 
States.4  The  declaration,  complaint,  or  petition,  as  the  case 
may  be,  ought  to  state  all  the  elements  of  the  forbidden  act 
upon  which  it  is  based  ; 5  and  to  charge  that  the  act  was 
contrary  to  the  form  of  the  statute  in  such  cases  made  and  pro- 
vided." It  is  not  enough  to  charge  that  the  act  was  con- 
trary to  the  law  in  such  cases  made  and  provided  ; 7  but  to 
aver  it  to  have  been  contrary  to  the  form  of  the  statutes  in 
such  cases  made  and  provided,  though  inartistic,  is  not  fatal.8 
It  is  not  necessary  to  aver  the  uses  to  which  the  penalty  when 
recovered,  is  to  be  applied.9 

§  333.  The  first  two  of  the  classes  of  acts,  forbidden  by 
Section  4901  of  the  Revised  Statutes,  are  not  only  injurious 
to  the  public,  in  the  manner  already  explained  ;  but  they  are 
also  injurious  to  the  rightful  patentees.  Such  acts  enable 
infringers  to  increase  the  amount  of  their  infringements,  by 
inducing  the  public  to  believe  that  the  articles  they  sell  were 
lawfully  made,  and  may  be  lawfully  sold  and  used.  So  also, 
such  acts  may  enable  infringers  to  palm  off  on  the  public  an 
inferior  article,  the  using  of  which  will  disappoint  the  pur- 


1  Revised  Statutes,  Section  4901.  •  Sears   v.  United  States,  1   Gal- 

2  Revised  Statutes,  Section  732.  lison,  259,  1812. 

3  Stimpson  v.  Pond,  2  Curtis,  505,  7  Smith  v.  United  States,   1  Gal- 
1855 ;    Jacob    v.    United    States,    1  lison,  264,  1812. 
Brockenbrough,  520,  1821.  8  Kenrick  v.  United  States,  1  Gal- 

4  Revised  Statutes,   Sections  721,  lison,  273,  1812. 

914.  »  Sears  v.  United  States,   1  Gal- 

6  Ferrett  v.  Atwill,  1  Blatch.   155,  lison,  259,  1812. 
1846. 


240  QUI   TAM    ACTIONS.  [CHAP.  XV. 

chaser,  and  thus  operate  to  injure  the  reputation  of  the 
genuine  thing.  For  these  reasons,  it  has  been  held  that  a 
person  who  is  guilty  of  an  act  of  either  of  the  first  two  classes, 
may  be  restrained  by  an  injunction  from  any  repetition  of 
such  an  act.1 

§  334.  A  writ  of  error  lies  to  the  Circuit  Court  for  the  same 
district,  from  the  final  judgments  of  a  District  Court,  in  a 
qui  tarn  patent  case,  because  such  a  case  is  a  civil  case,8  and 
because  the  matter  in  dispute  in  every  such  case  exceeds  the 
sum  of  fifty  dollars  ;  *  but  no  such  writ  of  error  lies  from  the 
Circuit  Court  to  the  Supreme  Court,  unless  at  least  fifty  pen- 
alties can  be  recovered  in  one  action,  and  a  judgment  for  five 
thousand  dollars  thus  be  obtained  ;4  for  a  qui  tarn,  patent  case 
is  not  a  case  touching  a  patent  right.5  Such  actions  are  based 
on  pretensions  of  patent  rights,  where  no  such  right  exists. 

1  Washburn  &  Moen  Mfg.  Co.  v.  •  *  Revised  Statutes,  Section  692, 18 

Haish,  4  Bann  <fe  Ard.  571,  1879.  Statutes  at  Large,  Part  3,  Ch.  77, 

8  Jacob  v.  United  States,  1  Brock-  Sec.  3,  p.  316. 

enbrough,  525,  1821.  6  Revised  Statutes,  Section  699. 

*  Revised  Statutes,  Section  633. 


CHAPTER  XVI. 

INFRINGEMENT. 


335.  Infringement  of  process   pat- 
ents, illustrated  by  the  case  of 
Tilghman  v.  Proctor. 

336.  Illustrated  by  the  case  of  Mowry 
v.  Whitney. 

337.  Illustrated  by  the  case  of  Coch- 
rane  v.  Deener. 

338.  Equivalents  in  processes. 

339.  Infringement    of    patents    for 
machines  or  manufactures. 

340.  Comparative  results. 

341.  The  test  of  comparative  modes 
of  operation. 

342.  Comparative  modes  of  operation 
as  illustrated  by  the  case  of  the 
Cawood  patent. 

343.  As   illustrated  by  the  Driven- 
Well  cases. 

344.  As   illustrated  by  Blanchard's 
patent    for    turning     irregular 
forms. 

345.  As    illustrated    by    Hayden's 
Brass-Kettle  machine. 

346.  As  illustrated  by   the  case  of 
Burr  v.  Duryee. 

347.  Addition. 

348.  Transposition  of  parts. 

349.  Omission. 

350.  Substitution. 

351.  Equivalents  inquired  into. 

352.  The  test  of  sameness  of  func- 
tion. 

353.  The  test  of  substantial  sameness 
of  way  of  performance. 

354.  Question  of  the  necessity  of  age 
in  equivalents,  stated  and  con- 


sidered in  the  light  of  the  views 
of  Justice  CLIFFORD. 

355.  The  same  question  considered 
in  the  light  of  the  cases  of  Mason 
v.  Graham  and  Clough  v.  Mfg. 
Co. 

356.  The  same  question  considered 
in  the   light  of   sundry  Circuit 
Court  cases. 

357.  The  same  question  considered 
in  the  light  of  the  case  of  Potter 
v.  Stewait. 

358.  Review  of  the  question  consid- 
ered in  the  last  four  sections. 

359.  Primary  and   secondary  inven- 
tions in  respect  of  the  doctrine 
of  equivalents. 

360.  Primary  inventions  considered 
in  this  respect. 

361.  Secondary   inventions    consid- 
ered in  the  same  respect. 

362.  Eeview   of    the    matters    con- 
sidered  in  the  last  three  sec- 
tions. 

363.  Changes  of  form  considered  hi 
respect  of  questions  of  infringe- 
ment. 

364.  Subject  of  the  last  section  illus- 
trated by  the  case  of  Strobridge 
v.  Lindsay. 

365.  Illustrated  by  the  case  of  Ives  o. 
Hamilton. 

366.  Illustrated  by  the  case  of  Morey 
v.  Lockwood. 

367.  Illustrated  by  the  case  of  the 
American  Diamond  Bock  Boring 


242 


INFRINGEMENT. 


[CHAP.   XVI. 


Co. 
Co. 


v.   The  Sullivan    Machine 


368.  Illustrated  by  the  case  of  Eliza- 
beth v.  Pavement  Co. 

369.  Infringement    of    patents    for 
compositions  of  matter. 

370.  Substitution  of  ingredients. 

371.  Substitution  of   ingredients  as 
illustrated  by  the  Giant-Powder 
cases. 

372.  Disclaimers  of  particular  equiva- 
lents. • 


373.  Changes  of  the  proportions  in 
compositions  of  matter. 

374.  The  various  classes  of  composi- 
tions of  matter. 

375.  Infringement  of  patents  for  de- 
signs. 

376.  Comparative  utility  not  a  cri- 
terion of  infringement. 

377.  Knowledge   of   a  patent  not  a 
necessary    element    in    its    in- 
fringement. 


§  335.  A  PATENT  for  a  process  is  infringed  by  him,  who,  with- 
out ownership  or  license,  uses  substantially  the  process  which 
the  patent  claims  ;  whether  or  not  he  uses  substantially  the 
apparatus  which  the  patent  describes.1  Infringement  of  a 
process  patent  may  occur  even  where  precise  identity  does 
not  exist  in  respect  of  the  process  claimed  by  the  patent,  and 
that  used  by  the  infringer.  In  the  leading  case  just  cited, 
the  apparatus  used  by  the  infringer  was  totally  unlike  that 
described  by  the  patent ;  and  the  process  used  by  the  infringer 
differed  from  the  patented  process  in  several  particulars.  The 
claim  of  the  patent  was  :  ' '  The  manufacturing  of  fat  acids 
and  glycerine  from  fatty  bodies  by  the  action  of  water  at  a 
high  temperature  and  pressure."  The  description  of  the 
process  which  was  contained  in  the  specification  of  the  patent, 
gtated  that  the  water  should  be  mixed  with  the  fatty  body  in 
the  proportion  of  two  or  three  parts  of  fat,  to  one  of  water  ; 
and  that  the  mixture  should  be  heated  to  about  612°  Fahren- 
heit ;  and  should  be  subjected  to  a  pressure  sufficient  to  pre- 
vent the  heat  from  converting  the  water  into  steam. 

The  infringer  mixed  from  four  to  seven  per  cent  of  lime 
with  the  water  and  the  fat ;  and  heated  the  mixture  to  only 
about  310°  Fahrenheit  ;  and  subjected  it  to  a  pressure  corre- 
spondingly lower  than  what  would  have  been  necessary  to  pre- 
vent the  conversion  of  the  water  into  steam,  if  he  had  used 
the  higher  degree  of  heat.  So  also,  he  heated  his  mixture  by 
means  of  superheated  steam  introduced  into  the  vessel  con- 


1  Tilghman  v.  Proctor,  102  U.  S.  730,  1880. 


CHAP.   XVI.]  INFRINGEMENT.  243 

taining  it,  instead  of  applying  heat  to  the  outside  of  the  vessel ; 
and  he  maintained  the  intimacy  of  the  mixture  by  continuous- 
ly pumping  the  water  from  the  bottom  to  the  top  of  the 
mingled  mass,  instead  of  continuously  forcing  the  mixture 
through  a  coil  of  tubes.  Notwithstanding  all  these  differ- 
ences, the  Supreme  Court  held  the  defendant's  process  to 
substantially  include  that  of  the  patent,  and  therefore  to  be 
an  infringement  of  the  latter.  This  holding  was  not  incon- 
sistent with  the  opinion  that  the  addition  of  the  lime  to  the 
mixture,  was  a  useful  addition  to  the  patented  process,  nor  with 
the  possibility  that  the  defendant's  method  of  maintaining  the 
intimacy  of  the  mixture,  was  superior  to  that  of  the  patent,  nor 
with  the  probability  that  the  heating  by  the  introduction  of 
superheated  steam,  was  more  perfect  than  by  conducting  the 
heat  into  the  mixture  through  the  walls  of  the  inclosing 
vessel,  nor  with  the  fact  that  the  lower  degree  of  heat  and  of 
pressure  used  by  the  defendant  was  more  safe,  and  perhaps 
more  economical,  than  the  higher  degree  of  each,  which  was 
suggested  in  the  patent. 

§  336.  Similar  circumstances  characterized  the  question  of 
infringement  in  the  case  of  Mowry  v.  "Whitney.1  The  patent 
in  that  case  covered  a  process,  which  consisted  in  taking  cast 
iron  car- wheels  from  their  moulds  as  soon  as  they  become  solid 
enough  to  retain  their  shape  ;  and  in  immediately  placing  the 
wheels  in  a  furnace  or  chamber,  previously  heated  to  about  the 
temperature  of  the  wheels  when  taken  from  the  moulds  ;  and 
in  thereupon  reheating  those  wheels  ;  and  then  in  causing 
them  to  finally  cool  with  a  great  degree  of  slowness. 

The  infringer's  process  consisted  in  taking  the  wheels  red 
hot  from  the  moulds  ;  and  in  thereupon  putting  them  in  an 
unheated  chamber,  interlaying  them  with  charcoal,  and  cover- 
ing the  whole  with  a  perforated  metal  plate  ;  and  in  then 
causing  the  charcoal  to  burn  so  as  to  reheat  the  wheels  to  a 
somewhat  indefinitely  high  temperature  ;  and  in  so  adjusting 
the  draft,  as  to  make  the  charcoal  burn  out  and  the  wheels  to 
consequently  cool  down,  with  a  great  degree  of  slowness. 

>  Mowry  v.  Whitney,  14  Wallace,  620,  1871. 


244  INFRINGEMENT.  [CHAP.  XVI. 

The  Supreme  Court  found  all  of  the  steps  of  the  complain- 
ant's process  in  the  defendant's  doings,  though  confessedly 
the  reheating  was  done  by  different  means,  and  the  slow  cool- 
ing regulated  on  different  principles,  from  those  which  caused 
and  controlled  the  corresponding  parts  of  the  complainant's 
process. 

§  337.  The  case  of  Cochrane  v.  Deener '  involved  the  in- 
fringement of  a  patent  for  a  process  of  winnowing  impurities 
out  of  ground  wheat,  while  the  flour  is  being  separated  from 
the  other  parts  of  the  meal  by  means  of  fine  cloth  sieves, 
commonly  called  ' '  bolts. ' '  The  patent  described  a  suitable 
apparatus  by  means  of  which  to  practice  this  process.  It 
consisted  of  a  series  of  cylindrical  sieves,  covered  with  cloth  of 
progressively  finer  meshes,  and  having  within  them  a  series  of 
air  pipes,  so  disposed  that  when  the  ground  wheat  was  in  the 
sieves,  and  the  sieves  were  revolving,  air  blasts  were  blown 
from  the  ends  of  those  pipes,  into  and  among  the  particles  of 
ground  wheat.  Those  air  blasts  operated  to  blow  the  im- 
purities through  the  opening  in  the  top  of  the  bolting 
chamber,  at  the  same  time  that  the  revolutions  of  the  sieves 
operated  to  separate  the  flour  from  the  middlings.  The  result 
of  the  whole  operation  was  to  separate  the  ground  wheat  into 
three  sorts  of  matter,  and  to  place  those  three  sorts  in  three 
different  receptacles. 

The  defendant  accomplished  the  same  result,  by  winnowing 
the  impurities  out  of  the  ground  wheat,  while  the  flour  was 
being  separated  from  the  other  parts  of  the  meal,  by  means  of 
fine  cloth  sieves.  But  the  defendant's  sieves  were  flat,  and 
the  air  blasts  were  blown  through  those  sieves  from  below  and 
reached  the  impurities  through  the  cloth,  instead  of  reaching 
them  from  the  ends  of  pipes  located  on  the  same  side  of  the 
cloth,  as  that  occupied  by  the  ground  wheat.  The  Supreme 
Court,  however,  held  that  process  to  infringe  the  complain- 
ant's patent,  notwithstanding  these  differences. 

§  338.  No  process  patent  is  infringed  where  any  one  of  the 
series  of  acts  which  constitute  the  process  is  omitted  by  the 

1  Cochrane  v.  Deener,  94  U.  S.  787,  1876. 


CHAP.   XVI.]  INFRINGEMENT.  24:5 

supposed  infringer,  unless  some  equivalent  act  is  substituted 
for  the  one  omitted.1  Precisely  what  constitutes  equivalency, 
as  between  acts,  has  never  been  decided  or  stated  by  the 
Supreme  Court.  Reason  seems  to  indicate  that  one  act  is 
the  equivalent  of  another  when  it  works  in  substantially  the 
same  way  to  accomplish  the  same  result.  Accordingly,  it 
has  been  held  that  tamping  oil  wells  with  benzine,  is  equivalent 
to  tamping  them  with  water  in  respect  of  the  series  of  acts 
which  constitute  the  process  covered  by  the  Roberts  torpedo 
patent." 

§  339.  Machines  and  manufactures  may  well  be  treated 
together  in  respect  of  infringement,  because  no  exact  line  can 
be  drawn  between  them,  and  because  the  same  rules  of  in- 
fringement are  applicable  to  both  those  classes  of  tangible 
things.  A  patent  for  a  machine  or  manufacture  is  infringed 
by  him,  who,  without  ownership  or  license,  makes,  or  uses, 
or  sells  any  specimen  of  the  thing  covered  by  any  claim  of 
that  patent.  It  is  not  an  infringement  of  a  patent,  to  make, 
use  or  sell  any  specimen  of  any  invention  described  but  not 
claimed  therein  ; 3  because  a  patent  covers  only  what  it  claims. 
But  whoever  infringes  any  one  claim  of  a  patent  infringes  the 
patent,  whether  or  not  it  contains  other  claims  which  he  does 
not  infringe.* 

Whether  a  particular  thing  made  or  used  or  sold  by  a 
particular  person,  infringes  a  particular  claim  of  a  particular 
patent,  is  always  a  question  of  fact.  In  some  cases  that  ques- 
tion can  readily  be  decided  by  the  application  of  one  rule  of 
law,  and  sometimes  by  the  application  of  another,  and  some- 

1  Dittmar  v.  Kix,  1  Fed.  Rep.  342,  1820  ;  Wyeth  v.  Stone,  1  Story,  273, 
1880  ;  Hammerschlag  v.  Garrett,  10  1840  ;  Pitts  v.  Whitman,  2  Story,  609, 
Fed.  Rep.  479,  1882  ;  Cotter  r.  Cop-  1843  ;  Colt  v.  Arms  Co.,  1  Fisher,  108, 
per  Co.,  13  Fed.  Kep.  234,  1882.  1851  ;   Pitts  v.   Wemple,  2   Fisher, 

2  Roberts  v.  Roter,  5  Fisher,  296,  10,   1855  ;  Foss  v.  Herbert,  1  Bissell, 
1872.  121,    1856  ;    Morris    v.    Barrett,    1 

3  Howe   v.  Williams,  2   Clif.  262,  Bond,  254, 1859  ;  Singer  v.  Walmsley, 
1863  ;  Waterbury  Brass  Co.  v.  Miller,  1  Fisher,    558,    1860  ;    McComb    v. 
9  Blatch.  93,  1871  ;  Toohey  v.  Hard-  Brodie,  1   Woods,    153,  1871  ;    Mc- 
ing,  4  Hughes,  253,  1880.  Comb    v.    Ernest,   1    Woods,    195, 

4  Moody  v.  Fiske,  2  Mason,  115,  1871. 


246  INFRINGEMENT.  [CHAP.   XVI. 

times  it  can  be  decided  only  by  the  judicial  sagacity  of  the 
tribunal  before  which  the  question  is  tried.  Such  relevant 
rules  of  law  as  are  well  established,  will  now  be  stated,  and, 
as  far  as  necessary,  will  be  illustrated  by  describing  the  leading 
cases  which  embody  them. 

§  340.  The  respective  results  of  a  machine  or  manufacture 
covered  by  the  claim  of  a  patent,  and  of  a  machine  or  manu- 
facture alleged  to  infringe  that  claim,  do  not  furnish  a  criterion 
by  which  to  decide  the  question  of  infringement.  Those  re- 
sults may  be  identical,  while  the  things  which  produce  them  are 
substantially  different.  Any  person  may  accomplish  the  result 
performed  by  a  patented  thing  without  infringing  the  patent,  if 
he  uses  means  substaatially  different  from  those  of  the  patent.1 
To  hold  the  contrary  of  this  rule  would  be  to  retard,  and  not  to 
promote  the  progress  of  the  useful  arts.2  So  also,  on  the  other 
hand,  the  respective  results  of  patented  and  alleged  infringing 
machines  or  manufactures  may  be  entirely  different  without 
causing  the  latter  to  escape  the  charge  of  infringement  even 
when  that  charge  is  based  on  unlicensed  using.  This  rule  results 
from  the  well-established  point  of  law  that  it  is  an  infringe- 
ment of  a  patent  to  use  any  machine  or  manufacture  claimed 
therein,  though  such  use  is  for  a  purpose  which  is  not  men- 
tioned in  the  patent.8 

§  341.  Mode  of  operation  is  a  criterion  of  infringement  on 
one  side  of  that  question,  but  not  on  the  other.  If  the  mode 
of  operation  of  an  alleged  infringing  thing  is  substantially 
different  from  that  covered  by  the  claim  alleged  to  be  in- 
fringed, it  follows  that  the  charge  of  infringement  must  be 
negatived  ;4  but  if  the  mode  of  operation  is  substantially  the 
same  it  does  not  follow  that  the  charge  of  infringement  must 
be  affirmed.  In  that  case  the  question  must  be  decided  by 
some  additional  criterion.  To  establish  an  infringement  of  a 

1  O'Reilly  v.Morse,  15  Howard,  62,  159,   1871;   Zinn  v.  Weiss,    7  Fed. 

1853.  Rep.  916,  1881  ;  Union  Stone  Co.  v. 

»  Smith  v.  Downing,  1  Fisher,  84  Allen,  14  Fed.  Rep.  353,  1882. 

1850.  4  Smith  v.  Downing,  1  Fisher,  83, 

»  Mabie  v.   Haskell,  2    Clif.    511,  1850  ;  Eames  v.  Cook,  2  Fisher,  149, 

1865  ;  McComb  v.  Brodie,  1  Woods,  1860. 


CHAP.  XVI.]  INFRINGEMENT.  247 

claim,  the  facts  must  be  subjected  to  several  successive  tests. 
If  the  case  fails  on  either  of  those  tests,  no  further  inquiry 
need  be  made  ;  but  an  infringement  cannot  be  affirmed  till  all 
those  tests  have  been  applied  and  have  been  withstood.  The 
first  of  these  is  that  which  relates  to  identity  of  mode  of 
operation.  It  is  therefore  important  to  know  wherein  this 
requisite  identity  consists.  A  dogmatic  statement  on  that 
point  has  probably  never  been  ventured  by  any  court.  The 
nature  of  the  question  seems  not  to  admit  of  an  answer  which 
shall  be  at  once  short  and  sufficient.  The  best  way  to  investi- 
gate the  subject  is  probably  to  reason  by  analogy  from  prec- 
edents ;  and  accordingly  several  of  the  sections  which  imme- 
diately follow,  are  devoted  to  an  analysis  of  cases,  with  a  view 
to  furnishing  the  investigator  with  data  for  such  reasoning. 

§  342.  The  Cawood  patent '  covered  a  machine  which  com- 
bined the  mode  of  operation  of  an  anvil,  with  the  mode  of 
operation  of  a  vise.  A  drawing  of  the  machine  is  printed  on 
page  492  of  1  Wallace.  The  railroad  rail  mended  upon  it,  was 
supported  by  it  as  by  an  anvil  ;  and  at  the  same  time  was 
clasped  by  it  as  by  a  vise.  The  Supreme  Court  held  that  the 
"  Michigan  Southern"  machine  did  not  infringe  the  Cawood 
patent,  because  while  that  machine  did  clasp  the  rail  as  a  vise, 
it  did  not  support  the  rail  as  an  anvil.  The  same  tribunal  also 
held  that  the  Beebe  and  Smith  machine  did  not  infringe  the 
Cawood  patent,  because  its  mode  of  operation  was  different. 
It  both  supported  and  clasped  the  rail,  but  it  clasped  it  by 
holding  it  between  two  jaws,  which  jaws,  when  in  position, 
rested  in  a  Y-shaped  notch  in  the  anvil.  The  exterior  of  the 
jaws  were  also  V-shaped,  in  order  to  fit  the  notch,  and  they 
clasped  the  rail  because  of  their  gravity,  and  not  in  the 
manner  of  a  vise.  They  also  supported  the  rail,  but  in  a 
manner  peculiar  to  themselves,  and  not  in  the  manner  of  an 
anvil. 

§  343.  The  driven-well  patent,  reissue  No.  4372,  covers  an 
interesting  invention.  That  invention  is  practised  by  driving 
into  the  ground  a  long  tube  closed  and  pointed  at  its  lower 

1  Cawood  Patent,  94  U.  S.  706,  1876. 


248  INFRINGEMENT.  [CHAP.   XVI. 

end,  and  having  perforations  through  its  sides  just  above  that 
end  ;  and  by  attaching  a  pump  to  its  upper  end  ;  and  by  work- 
ing that  pump  whenever  water  is  desired.  The  mode  of 
operation  of  that  well  is  as  follows  :  The  working  of  the  pump 
creates  a  vacuum  in  the  tube,  and  that  vacuum  in  turn  creates 
a  vacuum  outside  of  the  tube  in  the  neighborhood  of  its 
lower  end,  and  the  latter  vacuum  draws  to  itself  all  the  water 
in  several  millions  of  cubic  feet  of  the  surrounding  earth. 

The  alleged  inf ringer  in  one  case,1  followed  the  patent  in 
every  particular  except  that  instead  of  driving  the  tube  into 
the  earth,  or  into  a  hole  previously  made  by  driving  down 
a  rod  smaller  than  the  tube,  he  bored  a  hole  into  the  earth 
with  an  augur  larger  than  the  tube  which  he  placed  in 
the  hole  after  the  augur  was  withdrawn.  This  apparently 
slight  change  caused  the  well  to  have  a  substantially  different 
mode  of  operation  from  that  covered  by  the  patent.  The 
pump,  indeed,  created  the  vacuum  in  the  tube  as  before,  but 
that  vacuum  created  no  vacuum  around  outside  of  the  tube, 
because  the  space  outside  of  the  lower  end  of  the  tube  was 
in  direct  .communication  with  the  external  air,  through  the 
annular  space  which  surrounded  the  tube  throughout  its  entire 
length  and  which  was  due  to  the  fact  that  the  tube  was 
smaller  than  the  hole  in  which  it  was  placed.  Because  of  this 
difference,  Judge  McCitARY,  with  excellent  discrimination, 
held  tli at  the  well  of  the  defendant  did  not  infringe  the 
driven-well  reissue. 

Judges  SHIRAS  and  LOVE  afterward  decided  that  reissue 
to  be  void,  because  they  found  it  to  be  for  a  different 
invention  from  that  covered  by  the  original  patent."  They 
based  this  finding  on  the  fact  that  the  original  directed 
the  hole  to  be  made  in  the  ground  by  driving  down  a  rod, 
having  a  swell  thereon,  and  directed  the  insertion,  in  the  hole, 
of  a  tube  somewhat  smaller  than  the  diameter  of  the  swell  of 
the  rod  ;  and  on  the  further  fact  that  the  original  did  not  state 
that  the  pump  must  be  attached  to  the  tube  by  an  air-tight 

1  Andrews  v.  Long,  12  Fed.  Hep.  *  Andrews  u.  Hovey,  16  Fed.  Hep. 
:871,  1880.  396,  1883. 


CHAP.   XVI.]  INFRINGEMENT.  249- 

connection.  The  finding  cannot  be  thought  to  stand  on  this 
last  fact,  because  the  original  patent  did  state  that  water, 
when  not  flowing  naturally,  might  be  drawn  from  the  tube 
by  any  of  the  known  forms  of  pump,  and  because  it  could  not 
be  so  drawn  without  an  air-tight  connection  between  the  pump 
and  the  tube.  But  the  first  fact  stated  by  the  judges  to  sup- 
port their  finding  was  alone  sufficient  to  have  that  effect. 
That  fact  showed  the  original  patent  to  be  confined  to  an 
invention  identical  with  that  which,  in  the  former  case,  Judge 
McCRARY  had  held  to  be  substantially  different  from  the 
invention  covered  by  the  reissue,  and  which  was  substantially 
different  because  it  had  a  different  mode  of  operation. 

§  344.  Blanchard's  patent  for  a  machine  for  turning  and 
cutting  irregular  forms,  consisted  of  a  combination  of  a 
model,  a  guide,  and  a  cutter  wheel.  When  the  machine  was 
in  operation  the  guide  followed  the  irregularities  of  the  model, 
as  the  model  revolved,  and  the  guide  also  caused  the  cutter  to 
follow  the  same  irregular  curves  while  the  rough  block  was 
revolved  under  the  cutting  edges.  Both  model  and  block 
had  a  continuous  lateral  motion,  as  well  as  a  continuous  rotary 
motion,  and  therefore  the  guide  and  the  cutter  wheel  pro- 
ceeded in  corresponding  spiral  courses.  In  that  way  the  guide 
traversed  all  parts  of  the  surface  of  the  model,  and  the  cutter- 
wheel  traversed  all  portions  of  the  rough  block,  and  thus 
reduced  the  latter  to  conformity  with  the  shape  of  the  model. 
An  infringer  in  one  case '  so  combined  the  parts  of  the 
machine,  that  the  model  and  rough  block  both  rotated  by  an 
intermittent  motion,  and  moved  laterally  by  a  rectilinear 
reciprocating  motion.  Justice  GRIER  held  that  this  mode  of 
operation  was  substantially  unchanged  from  that  of  the  patent. 

§  345.  Hayden's  patent  for  a  machine  for  making  brass 
kettles  consisted  of  two  general  divisions.  1.  An  engine  lathe 
with  its  mandrel  to  revolve  the  pulleys  and  the  gearing,  and 
having  special  devices  for  the  special  work  in  hand.  2.  A 
furnishing  or  spinning  tool  and  tool  carriage,  secured  to  the 
frame  of  the  lathe,  and  having  special  devices  to  make  it  work 

1  Blanchard  v.  Reeves,  1  Fisher,  103,  1850. 


250  INFRINGEMENT.  [CHAP.  XVI. 

harmoniously  with  the  lathe  in  producing  the  kettles  which 
the  two  divisions  of  the  machine  jointly  operated  to  manufact- 
ure. These  two  divisions  were  operated  by  one  motive 
power,  like  a  shaft,  which  might  be  connected  with  a  water 
wheel,  or  with  a  steam  engine,  or  with  any  other  suitable  source 
of  motion. 

The  inf ringer  in  one  case.1  operated  the  first  division  of 
the  machine  by  one  such  motive  power  ;  but  he  operated  the 
second  division  by  another,  namely  by  the  hand  of  a  workman 
turning  a  crank.  Judge  WOODRUFF  held  that  this  was  not 
such  a  change  of  mode  of  operation  as  amounted  to  enough  to 
negative  infringement. 

§  346.  The  Wells  hat-body  machine  consisted  of  a  revolving 
brush  to  separate  and  throw  fibres  of  fur  ;  a  perforated  vacuum 
cone  to  receive  the  fur  on  its  exterior  surface  ;  and  an  inter- 
mediate tunnel,  to  guide  the  fur  from  the  brush  to  the  cone. 
The  patent  which  was  granted  for  that  invention  was  three 
times  surrendered  and  reissued.  The  second  reissue  was 
involved  in  a  celebrated  Supreme  Court  case."  That  reissue 
described  the  machine  which  Wells  invented,  and  it  claimed 
the  mode  of  operation,  substantially  as  described,  of  form- 
ing bats  (hat  bodies)  of  fur  fibres.  The  object  of  this  claim 
was  to  cover  the  machine  of  Seth  Boyden,  a  machine  which 
had  the  same  general  mode  of  operation  as  that  of  Wells,  but 
which  was  substantially  different  from  the  latter  in  one  of  its 
parts.  This  attempt  to  base  a  charge  of  infringement  on 
sameness  of  "  mode  of  operation"  alone,  was  occasioned  by  the 
fact,  that  Justice  CURTIS,  in  delivering  the  opinion  of  the 
Supreme  Court  in  the  case  of  Winans  v.  Denmead,3  had  used 
the  phrase  with  great  frequency.  He  used  it  exactly  twenty 
times  in  that  case  ;  and  the  counsel  for  the  Wells  patent,  when 
arguing  the  case  of  Burr  v.  Duryee,  formulated  seven  doc- 
trines which  they  stated  were  deducible  from  that  score  of 
instances.  Among  those  doctrines,  the  fourth  was  this : 

1  Waterbury  Brass  Co.  v.  Miller,  9       1863. 

Blatch.  94,  1871.  a  Winans  v.  Denmead,  15  Howard, 

*  Burr  v.  Duryee,  1  Wallace,  531       330,  1853. 


CHAP.   XVI.]  INFRINGEMENT.  251 

That  copying  a  mode  of  operation  is  an  infringement.  But 
Justice  GRIER,  who  was  one  of  the  majority  of  the  court 
which  decided  Winans  v.  Denmead,  was  convinced  that  the 
latter  decision  was  erroneous,  or  that  it  did  not  mean  what  it 
was  generally  understood  to  signify,  for  in  Burr  v.  Duryee  he 
delivered  the  unanimous  opinion  of  the  Supreme  Court  reject- 
ing the  complainant's  contention  in  terms  bordering  on  those 
of  contempt.  The  case  of  Winans  v.  Denmead  cannot  there- 
fore be  fairly  cited  as  an  authority  on  this  point,  for  if  it  is 
not  consistent  with  Burr  v.  Duryee,  it  was  overruled  by  the 
latter,  and  if  it  is  consistent  with  the  latter  case,  its  expres- 
sions are  likely  at  least  to  mislead  the  reader,  as  they  misled 
the  counsel  for  the  Wells  patent.  Harmoniously  with  its 
decision  in  Burr  v.  Duryee,  the  Supreme  Court  has  ever  since 
had  a  positive  tendency  to  disregard  whatever  is  abstract  and 
intangible  in  questions  of  infringement,  and  to  base  its  conclu- 
sions upon  the  concrete  features  of  the  issues  at  bar. 

§  347.  Addition  to  a  patented  machine  or  manufacture  does 
not  enable  him  who  makes,  uses  or  sells  the  patented  thing 
with  the  addition,  to  avoid  a  charge  of  infringement.1  This 
is  true  even  where  the  added  device  facilitates  the  working  of 
one  of  the  parts  of  the  patented  combination,  and  thus  makes 
the  latter  perform  its  function  with  more  excellence  and 
greater  speed.2  But  there  is  a  necessary  qualification  of  this 
rule,  which  must  not  be  overlooked  ;  a  qualification  founded 
as  yet  upon  no  adjudicated  case  exactly  in  point,  but  based  on 
considerations  of  justice  which  cannot  be  ignored  nor  disputed. 
If  a  patented  combination  differs  from  some  older  combina- 
tion, only  in  the  omission  of  one  of  the  parts  of  the  latter, 
and  in  a  resulting  difference  of  mode  of  operation,  the  restora- 
tion of  the  older  structure  by  adding  the  part  which  the 
patented  combination  omitted,  would  not  constitute  an  in- 
fringement of  the  latter. 

§  348.  Changing  the  relative  positions  of  the  parts  of  a 
machine  or  manufacture  does  not  avert  infringement  where 

1  Carr  v.  Rice,  1  Fisher,  209,  J  Cochrane  v.  Deener,  94  U.  8. 
1856.  786,  1876. 


252  INFRINGEMENT.  [CHAP.  XVI. 

the  parts  transposed  perform  the  same  respective  functions 
after  the  change  as  before.1  In  the  first  of  the  cases  just 
cited,  the  thing  transposed  was  a  beater  shaft  in  a  corn-sheller  ; 
both  in  its  original  and  in  its  new  position,  its  function  was  to 
force  the  ears  of  corn  into  the  throat  of  the  shell er.  In  the 
second  case,  the  thing  transposed  was  the  outlet  vapor  flue  of  a 
quicksilver  furnace  ;  and  that  flue  operated  in  the  same  way  to 
perform  the  same  function  in  the  infringing  apparatus  that  it 
did  in  the  patented  furnace. 

But  changing  the  relative  positions  of  the  parts  of  a  machine 
does  avert  infringement,  where  the  changing  of  those  positions 
so  changes  the  functions  of  the  parts,  that  the  machine 
acquires  a  substantially  different  mode  of  operation,  even 
though  the  result  of  the  machine  remains  the  same."  A  suit 
for  infringement  cannot  be  sustained  against  him  who  makes, 
uses  or  sells  a  substantially  different  combination,  even  though 
it  includes  exactly  the  same  ingredients  as  those  claimed  in 
combination  by  the  patent  in  suit  3  The  owner  of  a  patent 
for  a  combination  cannot  suppress  a  newer,  better  and  sub- 
stantially different  combination  of  the  same  ingredients.4 

§  349.  Omission  of  one  ingredient  of  a  combination  covered 
by  any  claim  of  a  patent,  averts  any  charge  of  infringe- 
ment based  on  that  claim."  A  combination  is  an  entirety. 
If  one  of  its  elements  is  omitted,  the  thing  claimed  dis-  . 
appears.  Every  part  of  the  combination  claimed  is  con- 
clusively presumed  to  be  material  to  the  combination,  and  no 
evidence  to. the  contrary  is  admissible  in  any  case  of  alleged 
infringement."  The  patentee  makes  all  the  parts  of  a  com- 
bination material,  when  he  claims  them  in  combination  and 


'Adams  v.  Mfg.  Co.,  3  Bann.  &  B  Prouty  v.  Buggies,  16  Peters,  341, 

Ard.  1,  1877  ;  Knox  v.  Quicksilver  1842  ;  Eames  v.  Godfrey,  1  Wallace, 

Mining  Co.  6  Sawyer,  438,  1878.  78,  1863  ;  Case  y.  Brown,  2  Wallace, 

3  Brooks  u.  Fisk,  15  Howard,  221,  320,  1864  ;  Dunbar  u.  Myers,  94 

1853.  U.  S.  187,  1876  ;  Fuller  v.  Yentzer, 

3  Gill.  v.   Wells,   22  Wallace,   14,  94  U.  8.  297,  1876. 

1874.  «  Vance  v.  Campbell,  1  Black,  430, 

4  Seymour  v.  Osborne,  11  Wallace,  1861  ;  Le  Fever  v.  Remington,  13 
655,  1870.  Fed.  Rep.  86,  1882. 


CHAP.   XVI.]  INFRINGEMENT.  253 

not  separately.1  A  patentee  may,  however,  describe  all  the 
devices  in  his  machine  or  manufacture,  and  instead  of  claim- 
ing all  or  any  particular  portion  .of  them  in  combination,  may 
claim  so  much  of  the  described  mechanism  as  produces  a 
particular  described  result.  Such  a  claim  is  infringed  by  him 
who,  without  ownership  or  license,  makes,  uses  or  sells  any 
apparatus  made  up  of  enough  of  the  described  devices  to  pro- 
duce the  specified  result,  by  the  specified  mode  of  operation." 
The  rule  stated  at  the  head  of  this  section  is  perhaps  the  best 
known  and  most  frequently  applied  of  all  the  rules  which 
pertain  to  infringement  ;  but  it  has  no  application  to  anything 
which  depends  upon  a  particular  form  for  patentability,  and 
which  for  convenience  may  be  made  in  several  sections.  A 
shoe  last,  for  example,  even  if  made  in  only  two  sections,  may 
infringe  a  patent  for  a  last  of  the  same  shape,  but  which  is 
made  in  three  sections  instead  of  in  two.3 

§  350.  No  substitution  of  an  equivalent  for  any  ingredient 
of  a  combination  covered  by  any  claim  of  a  patent  can 
avert  a  charge  of  infringement  of  that  claim.4  But  like 
substitution  of  something  which  is  not  an  equivalent,  will  have 
that  effect.6  The  doctrine  of  equivalents  may  be  invoked  by  , 
any  patentee  whether  he  claimed  equivalents  in  his  claim," 
or  described  any  in  his  specification/  or  omitted  to  do  either 
or  both  of  those  things.  But  where  a  patentee  states  in  his 
specification  that  a  particular  part  of  his  invention  is  to  be 
constructed  of  a  particular  material,  and  states  or  implies  that 
he  does  not  contemplate  any  other  material  as  being  suitable 
for  the  purpose,  it  is  not  certain  that  any  other  material  will 
be  treated  by  a  court  as  an  equivalent  of  the  one  recommended 
in  the  patent.8  Combination  patents  would  generally  be 

1  Water-Meter  Co.  v.  Desper,  101       562,  1878. 
U.  S.  332,  1879.  «  Dental  Vulcanite  Co.  v.  Davis, 

*  Silsby  v.  Foote,  14  Howard,  218,       102  U.  S.  229,  1880. 

1852.  i  Union   Metallic  Cartridge  Co.  v. 

*  Mabie  v.  Haskell,  2  Clif.  511, 1865.       United  States  Cartridge  Co.  2  Bann. 

4  O'Reilly  v.  Morse,  15  Howard,  62,       &  Ard.  594,  1877. 

1853  ;  Imhaeuser  v.  Buerk,  101  U.  S.  8  Aiken  v.  Bemis,  3  Woodbury  & 

655,  1879.  Minot,  348,  1847  ;  Harris  v.  Allen, 

5  Railway  Co.  v.  Sayles,  97  U.  S.       15  Fed.  Rep.  106,  1883. 


254  INFRINGEMENT.  [CHAP.   XVI. 

valueless  in  the  absence  of  a  right  to  equivalents,  for  few 
combinations  now  exist,  or  can  hereafter  be  made,  which  do 
not  contain  at  least  one  element,  an  efficient  substitute  for 
which  could  readily  be  suggested  by  any  person  skilled  in  the 
particular  art.1 

§  351.  To  define  an  equivalent  is  at  present  a  weighty  and 
difficult  undertaking.  It  is  weighty  because  many  rights  of 
property  now  depend,  and  always  will  depend,  upon  the 
definition.  It  is  difficult  because  the  deliverances  of  the 
Supreme  Court  upon  the  subject  are  inharmonious,  and  be- 
cause none  of  those  deliverances  are  accompanied  by  ele- 
mentary reasoning  on  the  merits  of  the  question.  The  primary 
points  are  plain.  The  difficulties  arise  in  the  latter  part 
of  the  problem  ;  but  the  plain  points  require  to  be  stated  in 
order  that  the  others  may  be  methodically  reached  and 
intelligently  discussed. 

§  352.  One  thing,  to  be  the  equivalent  of  another,  must 
perform  the  same  function  as  that  other.*  If  it  performs 
the  same  function,  the  fact  that  it  also  performs  another  func- 
tion is  an  immaterial  one.3  Therefore,  it  sometimes  happens 
that  a  junior  device  is  an  equivalent  of  a  senior  device  in  a  sense 
that  will  constitute  it  an  infringement  of  a  patent  for  the 
latter  ;  at  the  same  time  that  the  senior  device  is  not  an 
equivalent  of  the  junior  device  in  a  sense  that  will  cause 
the  former  to  negative  the  novelty  of  the  latter.4  One 
thing  may  accordingly  be  an  equivalent  of  another,  though  it 
does  more  than  that  other,  but  it  cannot  be  such  an  equivalent 
if  it  does  less.*  But  the  test  of  function  is  only  the  first  of 
several  tests  of  equivalency.  The  fact  that  one  thing  performs 
the  same  function  as  another,  though  necessary,  is  not  suffi- 
cient to  make  it  an  equivalent  thereof.8 

1  Turrell  v.  Spaeth,  3  Barm.  &  Ard.  mons,  3  Bann.  &  Ard.  623,  1878. 

458,  1878.  «  Loercher  v.  Crandal,  11  Fed.  Rep. 

*  Machine  Co.  v.  Murphy,  97  U.  S.  878,  1881. 

125,  1877.  »  Bliss  v.  Haight, 3  Fisher,  626, 1869. 

8  Foss  v.  Herbert,    2  Fisher,  31,  «  Eames  v.  Godfrey,  1  Wallace,  78, 

1856  ;  Sarven  v.  Hall,  9  Blatch.  524,  1863  ;   Conover  v.  Roach,  4   Fisher, 

1872  ;    Wheeler  v.   Reaper  Co.,  10  12, 1857  ;  Merriam  v.  Drake,  5  Fisher, 

Blatch.  195,  1872  ;  Kendrick  v.  Em-  259,  1872. 


CHAP.   XVI.]  INFRINGEMENT.  255 

§  353.  Function  must  be  performed  in  substantially  the 
same  way  by  an  alleged  equivalent,  as  by  the  thing  of  which 
it  is  alleged  to  be  an  equivalent,  in  order  to  constitute  it 
such.1  This  substantial  sameness  of  way  is  not  necessarily  a 
theoretical  scientific  sameness.  In  a  purely  scientific  sense,  a 
screw  always  performs  its  function  in  a  substantially  different 
way  from  a  lever,  and  in  substantially  the  same  way  as  a  wedge. 
Screws  and  wedges  are  equally  inclined  planes,  while  a  lever 
is  an  entirely  different  elementary  power.  But  screws  and 
levers  can  practically  be  substituted  for  each  other  in  a  larger 
number  of  machines,  than  screws  and  wedges  can  be  similarly 
substituted.  When  a  lever  and  a  screw  can  be  interchanged 
and  still  perform  the  same  function  with  a  result  that  is 
beneficially  the  same,  they  are  said  to  perform  the  same  func- 
tion in  substantially  the  same  way.2  But  one  thing  may 
be  an  equivalent  of  another  in  one  environment,  and  not  such 
an  equivalent  in  another  situation.3  Springs  and  weights 
are  generally  equivalents  ; 4  but  when  the  environment  is  such 
that  a  spring  will  operate  successfully  while  a  weight  will  not 
so  operate,  then  they  are  not  equivalents. B  While  in  most  cases 
a  mere  handle  is  not  an  equivalent  of  a  lever,  it  is  such  an 
equivalent  where  its  connections  are  such  that  it  performs  the 
same  function  in  substantially  the  same  way.6  Indeed,  in  one 
case,  the  Supreme  Court  went  to  the  length  of  deciding  a  con- 
fined column  of  water  in  a  cylinder,  worked  by  a  pump  and 
working  a  piston,  to  be  an  equivalent  of  a  combination  of  a 
vibrating  arm,  toggle  joint,  and  other  mechanical  devices,  when 
used  to  transmit  vibratory  power.7 

In  view  of  the  foregoing  adjudications,  and  of  the  nature  of 
the  question,  it  is  at  present  impossible  to  say  precisely  wherein 
the  required  sameness  of  way  of  performing  a  function  really 

1  Sickels  v.  Borden,  3  Blafcch.  535,  4  Imhaeuser  v.   Buerk,  101  U.  S. 

1856  ;   Burr  v.   Duryee,   1    Wallace,  656,  1879. 

573, 1863  ;  Werner  v.  King,  96  U.  8.  6  Cross    v.    Mackinnon,    11   Fed. 

230,  1877.  Rep.  601,  1882. 

*  Tnrrell  v.  Spaeth,  3  Bann.  &Ard.  6  Corn-Planter  Patent,  23  Wallace, 

458,  1878.  235,  1874. 

3  Cochrane  v.  Deener,  94  U.  S.  789,  7  Blake  v.  Robertson,  94  U.  S.  732, 

1876.  1876. 


256  INFRINGEMENT.  [CHAP.  XVL 

consists  ;  and  in  view  of  the  vast  variety  of  present  and  future 
mechanical  devices  and  modes  of  operation,  it  will  probably 
be  always  impossible  to  formulate  a  criterion  which  will  be 
applicable  to  every  case.  The  safest  reliance  is  upon  the 
analogies  of  precedents,  and  upon  the  instructed  sagacity  of 
those  who  are  called  upon  to  advise  and  to  decide  in  new 
cases. 

§  354.  Whether  a  device,  in  order  to  be  an  equivalent  of 
another,  must  have  been  known  at  the  time  of  the  invention  or 
of  the  patent,  is  the  final  inquiry  relevant  to  the  characteristics 
of  equivalents.  It  is  a  point  of  large  importance.  The  affirma- 
tive view  seems  to  have  originated  in  the  mind  of  Justice 
CLIFFORD,  and  to  have  originated  there  in  the  Fall  of  1865.  In 
November  of  that  year  he  instructed  a  jury  that  a  thing  to  be 
an  equivalent  of  an  article  in  a  patent,  must  have  been  known 
at  the  date  of  the  invention,  and  of  the  patent.1  The  rule  of 
the  Supreme  Court,  at  that  time,  seems  to  have  been  that  a 
thing  might  be  an  equivalent  of  a  thing  in  a  patent,  if  known 
to  be  such  at  the  time  of  the  infringement.2  Indeed,  Justice 
CLIFFORD  himself,  in  1861,  had  delivered  a  carefully  prepared 
instruction  to  a  jury,  in  which  he  said  :  "  You  will  regard 
the  substantial  equivalent  of  a  thing  as  being  the  same  as  the 
thing  itself,  so  that,  if  two  machines  do  the  same  work,  in  sub- 
stantially the  same  way,  and  accomplish  substantially  the  same 
result,  they  are  the  same  ;  and  so  if  parts  of  the  two  machines 
do  the  same  work,  in  substantially  the  same  way,  and  accomplish 
substantially  the  result,  those  parts  are  the  same,  although  they 
may  differ  in  name,  form,  or  shape."  *  Engaged,  as  he  then 
was,  in  defining  an  equivalent,  he  wholly  omitted  the  element 
of  age.  Indeed,  as  late  as  October,  1865,  he  found  a  defend- 
ant's device  to  be  an  equivalent  of  a  thing  in  a  patent,  because 
it  performed  the  same  function,  in  substantially  the  same  way, 
and  produced  substantially  the  same  result.4  Here  is  no- 
allusion  to  any  element  of  age  in  the  characteristics  of  an 

1  Union  Sugar  Refinery  u.  Matthies-  3  Gaboon  v.  Ring,  1  Clif.  620, 

sen,  2  Fisher,  629,  1865.  1861. 

8  O'Reilly  u.  Morse,  15  Howard,  «  Roberts  u.  Harnden,  2  Clif.  506, 

123,  1853.  1865. 


CHAP.   XVI.]  INFRINGEMENT.  257 

equivalent.  That  element  was  introduced  into  the  definition 
later  in  the  Fall.  But  no  statute  relevant  to  the  subject  was 
enacted  in  the  interval,  nor  indeed  at  any  other  time,  either 
before  or  since  Justice  CLIFFORD  changed  his  views.  Nor  did 
Justice  CLIFFORD  ever  announce  the  reasons  which  carried  him 
to  his  altered  definition.  He,  however,  repeated  the  later 
proposition  in  several  subsequent  cases. 

In  Seymour  v.  Osborne,1  he  said,  that  in  order  to  be  an 
equivalent  of  a  thing  in  a  patent,  a  device  must  have  been 
known  at  the  date  of  the  patent.  In  support  of  that  state- 
ment lie  cited  two  cases,  neither  of  which  appears  to  relate  to 
the  precise  point.8  But  after  formulating  the  doctrine  he 
was  content  to  ignore  it,  and  he  reasoned  out  the  question  of 
infringement  in  the  case  with  sole  reference  to  the  character 
of  the  defendant's  machines,  and  without  any  regard  to  the 
point  of  time  when  any  parts  of  those  machines  first  became 
known.  Indeed  he  expressly  said  that  questions  of  infringe- 
ment .are  best  determined  by  a  comparison  of  the  machines. 
Now,  it  is  evident  that  a  comparison  of  two  machines  has  no 
tendency  to  show  whether  a  particular  device  in  one  of  them, 
was  or  was  not  known  when  the  other  was  patented. 

In  Gould  v.  Rees 3  Justice  CLIFFORD  delivered  the  opinion 
of  the  Supreme  Court,  reversing  a  judgment  in  an  action  at 
law,  because  the  judge  had  charged  the  jury  that  the  omission 
of  one  of  the  elements  of  a  combination,  and  the  substitution 
of  another  mechanical  device  to  perform  the  same  function, 
will  not  avoid  infringement.  Now  that  instruction  was  clearly 
wrong,  because  it  did  not  provide,  as  it  ought,  that  the  sub- 
stitute must  perform  the  same  function  in  substantially  the 
same  way,  in  order  to  be  an  equivalent  for  the  thing  for  which 
it  is  substituted.4  The  Supreme  Court,  therefore,  decided  that 
the  instruction  was  erroneous,  but  Justice  CLIFFORD,  in; 
delivering  the  opinion,  said,  in  effect,  that  it  ought  also  to> 

*  Seymour  u.  Osborne,  11  Wallace,  3  Gould  v.  Eees,  15  Wallace,  193,. 

556,  1870.  1872. 

1  Prouty  v.  Buggies,  16  Peters,  341,  4  Burr  v.  Duryee,.  1  Wallace,  573,. 

1842  ;  Johnson  u.  Boot,  2  Clif.  123,  1863  ;  Sickels  v..  Borden,  3  Blatch. 

1862.  535,  1856. 


258  INFRINGEMENT.  [CHAP.  XVI. 

have  been  limited  by  the  proviso  that  the  thing  substituted 
should  have  been  known  at.  the  date  of  the  patent.  The  case 
did  not  call  for  any  decision  on  that  point,  because  the  un- 
doubted error  in  the  charge  was  enough  to  require  a  reversal 
of  the  judgment.  Nor  is  the  dictum  supported  by  any  reason- 
ing, or  by  any  citation  of  authority  other  than  the  previous 
dictum  of  the  same  justice  in  the  case  of  Seymour  v.  Os- 
borne.  It  is  true  that  the  doctrine  is  repeated  on  page  194, 
in  the  same  paragraph  with  an  undeniable  doctrine  of  the 
patent  law,  and  the  whole  paragraph  purports  to  be  supported 
by  nine  cited  cases.  But  none  of  those  cases  has  any  relevancy 
to  the  point  now  under  examination,  though  they  do  support 
the  other  doctrine  of  the  paragraph. 

In  Gill  v.  Wells '  Justice  CLIFFORD  repeated  his  revised 
definition  of  an  equivalent,  arid  stated  that  it  was  based  on 
repeated  Supreme  Court  decisions.  He  cited  seven  precedents 
to  sustain  this  statement.  Five  of  them  have  no  apparent 
relevancy  to  the  point,"  and  the  other  two  are  his  own  dicta 
in  Seymour  v.  Osbornc,  and  Rees  v.  Gould.  He  also  cited 
his  own  prior  decision  in  Roberts  v.  Harnden,3  but  he  who 
turns  to  that  case  will  find  that  its  definition  of  an  equivalent 
is  the  former  one  ;  the  one  which  omits  the  element  of 
age.  The  repetition  of  the  later  dicta  in  Gill  v.  Wells,  was 
also  obiter,  because,  before  repeating  it,  Justice  CLIFFORD  had 
delivered  the  opinion  of  the  Court  holding  the  instructions 
which  the  judge  below  gave  to  the  jury  on  the  question  of 
the  validity  of  the  patent  as  a  reissue,  to  have  been  erroneous 
instructions.  In  proceeding  further  Justice  CLIFFORD  was 
proceeding  merely  as  a  moot  judge.  Indeed,  after  laying  down 
his  rules  on  the  subject  of  equivalents  and  of  infringement, 
his  Honor  said  that :  "  Inconveniences  past  estimation  would 
result  if  those  rules  should  be  applied  in  defining  the  rights 


1  Gill   v.    Wells,    22   Wallace,    31,  Howard,  329,  1850  ;  Brooks  v.  Fisk, 

1874.  15    Howard,    212,    1853  ;    Vance   v. 

*  Prouty  v.  Ruggles,  16  Peters,  341,  Campbell,  1  Black,  428,  1861. 

1842  ;  Carver  u.    Hyde,   16   Peters,  »  Roberts  u.  Harnden,  2  Clif.  506, 

514,  1842  ;    Stimpson  u.  Railroad,  10  1865. 


CHAP.   XVI.]  INFRINGEMENT.  259 

of  a  patentee  to  make  amendments  to  the  specification  of  an 
original  patent  when  applying  for  a  reissue." 

Union  Paper-Bag  Machine  Co.  v.  Murphy,1  decided  two 
years  later  than  Gill  v.  Wells,  was  an  equity  suit  which  turned 
on  the  question  of  infringement.  The  court  below  found  non- 
infringement,  but  the  Supreme  Court  reversed  that  decision. 
In  delivering  the  opinion  Justice  CLIFFORD  returned  to  his 
earlier  definition  of  an  equivalent ;  to  that  definition  which  he 
gave  sixteen  years  before  in  Cahoon  v.  Ring,  and  enforced 
twel ve  years  before  in  Roberts  v.  Harnden.  He  now  formulated 
his  views  as  follows  :  "  Authorities  concur  that  the  substantial 
equivalent  of  a  thing,  in  the  sense  of  the  patent  law,  is  the 
same  as  the  thing  itself  ;  so  that  if  two  devices  do  the  same 
work  in  substantially  the  same  way,  and  accomplish  sub- 
stantially the  same  result,  they  are  the  same,  even  though 
they  differ  in  name,  form,  or  shape." 

But  in  Imhaeuser  v.  Buerk  2  Justice  CLIFFORD  once  more 
repeated  his  second  and  revised  definition  of  an  equivalent : 
the  definition  which  he  originated  in  the  case  of  the  Union 
Sugar  Refinery  v.  Matthiesen.  But  after  repeating  it  he 
ignored  it,  and  reasoned  out  the  question  of  infringement  in 
the  case,  on  the  basis  of  his  earlier  definition  :  the  definition  in 
Cahoon  v.  Ring  :  the  definition  which  ignores  age,  and  con- 
fines itself  to  function  and  to  character. 

§  355.  No  other  Supreme  Court  justice  has  ever  inserted  just 
such  doctrine  as  that  of  Justice  CLIFFORD'S  second  definition 
of  an  equivalent,  into  any  opinion  of  that  tribunal.  Several 
cases  have  been  adjudicated  in  that  court,  which  called  for 
the  application  of  that  doctrine,  if  it  is  a  true  one,  but 
it  has  never  been  applied  to  any  necessary  issue  pending 
therein.  On  the  contrary,,  that  court,  subsequent  to  the 
case  of  Gill  v.  Wells,  expressly  decided  that  two  things  are 
equivalents  where  they  perform  the  same  function,  in  sub- 
stantially the  same  manner.*  On  the  other  hand  Justice 


1  Machine  Co.  v.  Murphy,  97  U.  S.       65(5,  1879. 

125,  1877.  a  Mason  v.  Graham,  23  Wallace, 

9  Imhaeuser  v.   Buerk,  101  U.  S.      275,  1874. 


260  INFRINGEMENT.  [CHAP.  XVI. 

BLATCHFORD  said  in  a  recent  Supreme  Court  case,  that  the 
complainant  at  bar  was  "  entitled,  under  decisions  hereto- 
fore made  by  this  Court,  to  hold  as  infringements  all  valve 
regulations  applied  to  such  combination  which  perform  the 
same  office  in  substantially  the  same  way  as,  and  were  known 
equivalents  for,  his  f orm  of  valve  regulation."1  But  in  so 
saying,  Justice  BLATCHFORD  did  not  say  that  the  complainant 
would  not  have  been  entitled  to  hold  as  infringements  all 
valve  regulations,  applied  to  such  a  combination,  which  per- 
formed the  same  office,  in  substantially  the  same  way.  Nor  is 
such  a  denial  deducible  by  any  fair  implication  from  the 
facts  of  the  case.  Those  facts  could  not  only  endure  the 
milder  test,  but  could  also  endure  the  other  and  severer  one 
which  results  when  the  element  of  age  is  inserted  in  the 
definition  of  an  equivalent.  But  the  opinion  contains  no 
finding  and  no  statement  that  the  milder  test  would  not  have 
been  sufficiently  severe  for  the  purpose  in  hand,  if  the  facts 
had  been  unable  to  endure  the  more  exacting  criterion. 

§  356.  Nearly  all  the  Circuit  Courts  have  uniformly  ignored 
the  element  of  age  when  inquiring  about  equivalents,  and 
several  of  them  have  decided  or  stated  that  one  thing  is 
an  equivalent  of  another  where  it  performs  substantially  the 
same  function,  in  substantially  the  same  way."  Indeed, 
Justice  CLIFFORD  himself  decided  the  third  of  these  cases, 
the  case  of  Graham  v.  Mason,  and  in  doing  so  said  that  "  It  is 
a  well-settled  law  that  if  one  device  is  employed  in  a  similar 
combination  as  another,  and  performs  the  same  function  in 
the  same  way,  the  two  are  substantially  the  same,  although 
they  may  be  different  in  form,  and  may  be  known  among 
mechanics  by  different  names. "  Probably  only  three  Circuit 
Court  cases,3  except  a  part  of  those  decided  by  Justice  CLIF- 

1  Clough  v.  Mfg.  Co.    106    U.  8.  7  Bissell,  382,  1877  ;  Evory  v.  Burt, 

178,  1882.  15  Fed.  Hep.  112,  1883. 

*  Conover  v.  Roach,  4  Fisher,  26,          3  King  v.  Cement  Co.    6  Fisher. 

1857  ;  Conover  v.  Rap,  4  Fisher,  61,  341,  1873  ;  Webster  r.  Carpet  Co.  1 

1859  ;  Graham  v.  Mason,  5   Fisher,  Bann.  <fc  Ard.  90,  1874  ;  Babcock  v. 

11,  1869  ;  Harwood  v.   Mfg.   Co.   3  Judd,  5  Bann.  &  Ard.  130, 1880. 
Fisher,  530,  1869  ;  Vogler  v.  Semple, 


CHAP.  XVI.]  INFRINGEMENT.  261 

FORD,  have  ever  recognized  any  such  definition  of  an  equivalent 
as  embodies  the  element  of  age  ;  and  in  only  two  of  the  three 
did  any  issue  depend  upon  the  soundness  or  unsoundness  of 
that  definition. 

§  357.  Justice  BLATCHFORD  has  had  on  the  circuit  a  legiti- 
mate occasion  to  decide  whether  a  thing,  in  order  to  be  an 
equivalent  of  a  device  in  a  patent,  must  have  been  known  at 
the  date  of  the  invention  covered  by  that  patent.  That  ques- 
tion arose  and  was  argued  before  him  in  the  case  of  the 
Batchelder  Sewing  Machine,  and  was  decided  in  the  nega- 
tive.1 Each  claim  of  the  Batchelder  patent  was  for  a  com- 
bination. Among  them  the  fourth  consisted  of  four  ingre- 
dients, and  among  those  ingredients  was  a  so-called  perpetual 
feed."  That  perpetual  feed  consisted  of  a  belt  armed  with 
points  and  passing  around  rollers.  The  defendant  substituted 
for  that  device  a  four- motion  feed  which  was  never  known 
till  long  after  the  date  of  the  Batchelder  invention,  and  long 
after  the  date  of  the  Batchelder  patent.  That  fact  of  newness 
was  urged  as  a  reason  for  finding  non-infringeinent,  but  Justice 
BLATCHFORD  held  it  to  constitute  no  ground  for  such  a  finding. 
The  principle  of  his  decision  in  this  case,  was  also  applied  by 
the  same  judge  to  a  question  of  electro-chemical  equivalents  in 
another.3 

§  358.  The  question,  stated  at  the  head  of  Section  354,  has 
thus  far  been  treated  in  the  light  of  the  precedents  without 
regard  to  the  reasons  which  must  underlie  the  true  answer. 
None  of  these  precedents,  save  those  established  by  Justice 
BLATCHFORD,  seem  to  contain  any  argument  on  the  point.  The 
judges  appear  generally  to  have  contented  themselves  with 
following  such  decisions  or  obiter  dicta  on  the  point,  as  were 
called  to  their  attention,  or  as  arose  in  their  memory,  and 
accordingly  their  deliverances  are  so  diverse  that  they  cannot 
be  harmonized.  But  it  may  not  be  impossible  to  reach  the 
true  answer  by  a  process  of  reasoning.  Until  such  a  process 

1  Potter  v.  Stewart,  18  Blatch.  563,       105,  1869. 

1881.  «  United  Nickel  Co.  v.  Pendleton, 

4  Potter  v.  Braunsdorf,  7  Blatch.       15  Fed.  Rep.  745,  1883. 


INFRINGEMENT.  [CHAP.   XVI. 

is  found  to  lead  in  another  direction,  it  is  probably  best  to  rely 
upon  the  decision  of  the  Supreme  Court  in  Mason  v.  Graham, 
and  upcn  that  of  Justice  BLATCHFOKD  in  Potter  v.  Stewart, 
rather  than  upon  the  obiter  dicta  of  Justice  CLIFFORD  in 
Seymour  v.  Osborne,  Gould  v.  Rees,  Gill  v.  Wells,  and 
Imhaeuser  v.  Buerk.  Until  such  a  process  is  found  to  establish 
another  doctrine,  it  is  safe  to  define  an  equivalent  as  a  thing 
which  performs  the  same  function,  and  performs  that  function 
in  substantially  the  same  manner,  as  the  thing  of  which  it  is 
alleged  to  be  an  equivalent. 

§  359.  Primary  inventions  are  entitled  to  a  somewhat  looser 
application  of  this  definition  of  an  equivalent,  than  those 
inventions  which  are  secondary.  A  primary  invention  is  one 
which  performs  a  function  never  performed  by  any  earlier 
invention.  A  secondary  invention  is  one  which  performs  a 
function  previously  performed  by  some  earlier  invention,  but 
which  performs  that  function  in  a  substantially  different  way 
from  any  that  preceded  it.  There  are  but  two  Supreme  Court 
cases  which  have  clearly  attended  to  the  distinction  now  under 
treatment.1  In  the  first  of  these  cases  the  court  said:  "If 
he  [the  patentee]  be  the  original  inventor  of  the  device  or 
machine  called  the  divider,  he  will  have  a  right  to  treat  as 
infringers  all  who  make  dividers  operating  on  the  same  prin- 
ciple, and  performing  the  same  functions  by  analogous  means 
or  equivalent  combinations,  even  though  the  infringing 
machine  may  be  an  improvement  of  the  original,  and  patent- 
able  as  such.  But  if  the  invention  claimed  be  itself  but  an 
improvement  on  a  known  machine  by  a  mere  change  of  form 
or  combination  of  parts,  the  patentee  cannot  treat  another  as 
an  infringer  who  has  improved  the  original  machine  by  use  of 
a  different  form  or  combination  performing  the  same  func- 
tions. The  inventor  of  the  first  improvement  cannot  invoke 
the  doctrine  of  equivalents  to  suppress  all  other  improvements 
which  are  not  mere  colorable  invasions  of  the  first." 

In  the  last  of  these  cases  the  court  said  :  "In  such  cases,  if 

1  McCormick  v.  Talcott,  20  Howard,  405,  1857  ;  Railway  Co.  v.  Sayles,  97 
U.  S.  556,  1878. 


CHAP.  XVI.]  INFRINGEMENT.  263 

one  inventor  precedes  all  the  rest,  and  strikes  out  something 
which  includes  and  underlies  all  that  they  produce,  he  acquires 
a  monopoly,  and  subjects  them  to  tribute.  But  if  the  advance 
toward  the  thing  desired  is  gradual,  and  proceeds  step  by  step, 
so  that  no  one  can  claim  the  complete  whole,  then  each  is 
entitled  only  to  the  specific  form  of  device  which  he  produces, 
and  every  other  inventor  is  entitled  to  his  own  specific  form, 
so  long  as  it  differs  from  those  of  his  competitors,  and  does  not 
include  theirs." 

The  exact  thought  which  resides  in  the  breasts  of  the 
judges,  probably  cannot  be  learned  from  any  mere  reading  of 
those  two  deliverances.  They  require  analysis,  and  that 
analysis  must  be  made  in  the  light  of  several  considerations 
which  do  not  appear  upon  the  face  of  the  language  used  by 
the  court.  Let  the  mind  be  therefore  directed  a  \vhile  to  such 
an  inquiry,  before  dropping  the  point  and  proceeding  to 
another  branch  of  the  subject  of  infringement. 

§  360.  Consider  first  the  case  of  the  primary  patent.  Such 
a  patent  is  said  in  McCormick  v.  Talcott  to  be  infringed  by 
things  "which  operate  on  the  same  principle,"  and  "  per- 
form the  same  functions"  by  "  analogous  means"  or  "  equiva- 
lent combinations."  Now,  "operating  on  the  same  prin- 
ciple" doubtless  means  having  the  same  "  mode  of  opera- 
tion ;"  '  and  the  signification  of  the  latter  phrase  is  now  fairly 
well  established  in  the  patent  law.  "  Performing  the  same 
functions"  is  a  phrase  still  clearer  in  meaning,  and  equally 
just  in  its  application  to  the  matter  in  hand.  But  the  expres- 
sion "  analogous  means"  leaves  that  important  branch  of  the 
rule  very  much  at  large.  "Analogous"  signifies  "bearing 
some  resemblance."  Analogies  are  sometimes  detected  in 
things  which  on  the  whole  are  decidedly  unlike.  What 
proportion  the  likeness  of  two  things  must  bear  to  their 
unlikeness,  in  order  that  they  may  constitute  "  analogous 
means"  is  a  point  upon  which  it  is  evident  the  court  did  not 
mean  to  be  precise.  "Equivalent  combinations"  doubtless 
signifies  the  same  as  "combinations  of  equivalents,"  and 

1  Burr  u.  Duryee,  1  Wallace,  531,  1863. 


264  INFRINGEMENT.  [CHAP.   XVI. 

therefore  that  branch  of  the  rule  gives  to  primary  patents  the 
benefit  of  the  doctrine  of  equivalents  heretofore  explained.1 
All  patents  are  entitled  to  that  doctrine  in  some  shape,  but  not 
all  patents  are  entitled  to  suppress  everything  that  could  be 
called  "  analogous  means"  for  performing  its  functions. 
Turning  now  to  Railway  Co.  v.  Sayles,  it  appears  there  to  be 
stated  that  a  primary  patent  is  infringed  by  whatever  it 
"includes  and  underlies."  The  emphasis  here  must  be 
placed  on  the  conjunction,  because  no  patent  is  infringed  by 
any  combination  of  the  parts  it  includes,  unless  that  combina- 
tion embraces  all  of  the  parts  included  in  some  one  claim  of 
the  patent.*  The  word  "  underlie  "  is  doubtless  used  meta- 
phorically in  this  phrase.  It  cannot  mean  that  one  thing 
infringes  the  patent  for  another  merely  because  it  is  mechani- 
cally placed  upon  that  other,  and  is  kept  from  falling  to  the 
ground  by  it.  But  the  metaphorical  meaning  of  the  word 
"  underlie"  as  applied  to  inventions,  is  not  a  precise  meaning. 
It  leaves  scope  to  discretion  in  its  application,  and  was  doubt- 
less so  intended. 

§  361.  Now  consider  the  case  of  the  secondary  patent. 
McCormick  v.  Talcott  states  that  such  a  patent  is  infringed 
only  by  "colorable  invasions."  That  also  is  a  metaphor. 
Its  meaning  seems  to  be  "  plain  appropriation,"  or  "  undeni- 
able infringement,"  undeniable,  of  course,  in  the  eye  of  the 
law,  and  not  necessarily  undeniable  by  persons  unacquainted 
with  the  established  criteria,  by  means  of  which  substantial 
identity  or  substantial  difference  is  ascertained  to  exist  in  a 
given  case.  Turning  again  to  Railway  Co.  v.  Sayles,  it  is 
found  there  to  be  stated  that  a  secondary  patent  is  entitled  only 
to  its  "specific  form  of  device."  But  that  statement  is 
qualified  near  the  bottom  of  page  561  by  the  addition  of  the 
words  "  or  that  which  is  substantially  the  same." 

§  362.  The  two  cases  seem  therefore  to  teach  general  doc- 


1  Sections  350  to  358  inclusive.  2   Wallace,    320,  1864  ;    Dunbar  w. 

*  Prouty   v.   Ruggles,    16    Peters,  Myers,  94  U.  8.  187,  1876  ;  Fuller 

341,    1842  ;    Eames    v.    Godfrey,    1  v.  Yentzer,  94  U.  S.  297,  1876. 
Wallace,   78,  1864  ;  Case  v.  Brown, 


CHAP.  XVI.]  INFRINGEMENT.  265 

trines  rather  than  precise  rules  ;  and  those  general  doctrines 
appear  to  be  about  as  follows  : 

There  are  two  tests  of  equivalency.  1.  Identity  of  func- 
tion. 2.  Substantial  identity  of  way  of  performing  that 
function.  Primary  as  well  as  secondary  patents  are  infringed 
by  no  substitutions  that  do  not  fully  respond  to  the  first  of 
these  tests.  The  second  of  these  tests  is  somewhat  elastic, 
because  it  contains  the  word  "substantial."  That  word  is 
allowed  to  condone  more  and  more  important  differences  in 
the  case  of  a  primary  patent,  than  in  the  case  of  a  secondary 
one.  In  the  case  of  a  patent  narrowed  in  construction  by  an 
extensive  state  of  the  preceding  art,  the  word  "substantial" 
will  give  but  little  elasticity  to  the  application  of  the  doctrine. 
If  fewer  inventions  preceded  the  one  at  bar,  the  word  will 
have  somewhat  more  of  carrying  power.  "When  the  inven- 
tion at  bar  is  strictly  primary,  and  especially  if  it  is  extreme- 
ly useful,  then  the  word  substantial  will  be  made  to  cover 
differences  alike  numerous  and  important,  and  even  highly 
creditable  to  the  infriiiger  who  invented  them.  Probably  the 
most  striking  instances  of  the  latter  sort  which  are  to  be  found 
in  the  books,  are  to  be  found  in  the  telephone  cases.1 

§  363.  A  change  of  form  does  not  avoid  an  infringement  of 
a  patent,  unless  the  patent  specifies  a  particular  form  as  the 
means  by  which  the  effect  of  the  invention  is  produced." 
Even  where  a  change  of  form  somewhat  modifies  the  construc- 
tion the  action  or  the  utility  of  a  patented  thing,  non- 
infringement  will  seldom  result  from  such  a  change.  The  best 
way  to  show  the  scope  and  meaning  of  these  rules  is  to 
collect  and  explain  the  instances  in  which  changes  of  form 
have  been  held  to  be  immaterial  to  questions  of  infringement. 

§  364.  Strobridge  v.  Lindsay 3  was  a  case,  the  patent  in- 
volved in  which,  covered  a  coffee  mill.  The  hopper  and 
grinding  shell  of  that  mill  were  formed  in  a  single  piece,  and 

1  American  Bell  Telephone  Co.  v.  s  O'Reilly  u.  Morse,    15   Howard, 

Spencer,    8  Fed.    Rep.    509,    1881  ;  123,  1853. 

American    Bell    Telephone    Co.    v.  3  Strobridge   v.    Lindsay,    6   Fed. 

Dolbear,  15  Fed.  Rep.  448,  1883.  Rep.  510,  1881. 


266  INFRINGEMENT.  [CHAP.  XVI. 

were  suspended  within  the  box,  by  the  upper  part  of  the 
hopper,  or  by  a  flange  thereon.  The  defendant's  mill  was 
like  the  complainant's,  except  that  the  hopper  and  the  grind- 
ing shell  were  separate  constructions,  but  were  firmly  fastened 
together  before  they  were  suspended  in  the  box.  That  change 
of  form  resulted  in  a  change  of  construction,  but  in  no  change 
of  action  or  of1  utility.  It  was  of  course  held  not  to  avoid 
infringement. 

§  365.  Ives  v.  Hamilton '  was  a  case  wherein  the  patent 
covered  a  combination  of  a  saw-mill  saw,  with  a  pair  of  curved 
guides  at  the  upper  end  of  the  saw  ;  and  a  lever,  connecting 
rod  of  a  pitman,  straight  guides,  pivoted  cross-head,  and  slides 
or  blocks,  and  crank-pin,  or  their  equivalents,  at  the  opposite 
end  ;  whereby  the  toothed  edge  of  the  saw  was  caused  to  move 
unequally  forward  and  backward  at  its  two  ends,  while  sawing. 
The  result  was  a  rocking  or  vibratory  motion  in  the  saw,  instead 
of  the  straight  reciprocating  motion  theretofore  characteristic 
of  saw-mill  saws.  The  defendant  .substituted  for  the  curved 
guides  of  the  patent,  similar  guides  made  crooked  by  a  broken 
line.  But  the  Supreme  Court  held  this  change  of  form  not 
to  avoid  infringement,  saying  that  a  curve  is  often  treated 
even  in  mathematical  science  as  constituting  a  succession  of 
very  short  straight  lines,  or  as  one  broken  line  constantly 
changing  its  direction. 

§  366.  Morey  -y.  Lockwood,"  was  a  case  in  which  the  bill 
was  based  on  the  patent  for  the  Davidson  syringe  ;  an  inven- 
tion which  furnishes  a  good  illustration  of  one  of  the  rules  which 
relate  to  infringement,  as  well  as  of  one  of  those  which  relate 
to  novelty.  In  it,  the  bulb  was  placed  in  an  axial  line  with 
two  flexible  tubes,  and  received  enema  at  one  of  its  ends, 
from  one  of  those  tubes,  and  discharged  the  same,  from  its 
other  end,  into  and  through  the  other  of  those  tubes.  The 
Supreme  Court  held  the  patent  to  have  been  infringed  by 
the  Richardson  syringe,  in  which  the  bulb  was  placed  above 
the  axial  line  of  the  two  flexible  tubes,  and  received  the  enema 

1  Ires  v.  Hamilton,  92  U.  S.  431,  »  Morey  v.  Lockwood,  8  Wallace 
1875.  230,  1868. 


CHAP.  XVI.]  INFRINGEMENT.  267 

from  one  of  those  tubes  near  the  point  where  it  discharged  the 
same  into  the  other. 

§  367.  The  American  Diamond  Rock  Boring  Co.  v.  The 
Sullivan  Machine  Co.,1  was  a  case  involving  a  patent  for  a 
rock-boring  implement,  consisting  of  a  hollow  metal  boring 
head  armed  with  diamonds,  and  which  when  moved  with  a 
combined  rotary  and  forward  motion,  bored  an  annular  hole 
into  rock,  leaving  a  central  core  to  be  subsequently  broken  by 
a  wedge  and  then  readily  removed.  The  defendant  used  a 
rock-boring  tool,  consisting  of  a  hollow  metal  boring  head,  but 
having  its  bottom  partially  plugged  so  as  to  leave  two  holes 
elsewhere  than  in  the  centre  of  the  head,  and  having  a  convex 
surface  armed  with  diamonds.  This  tool  bored  a  simple  hole 
into  rock  without  leaving  any  core  to  be  afterward  removed. 
The  change  of  form  involved  a  modification  of  the  action,  and 
perhaps  a  modification  of  the  utility  of  the  implement,  but  it 
was  held  not  to  avoid  infringement. 

§  368.  Elizabeth  v.  Pavement  Co."  was  a  case  based  on  the 
Nicholson  pavement  patent.  That  pavement  consisted  pri- 
marily of  rows  of  parallel-sided  wood  blocks,  set  endwise, 
on  a  continuous  foundation,  the  rows  being  separated  by 
parallel-sided  strips  of  board,  set  edgewise  between  them,  and 
resting  on  the  same  foundation,  and  about  half  as  wide  as  the 
blocks  were  long.  The  defendant  made  a  pavement  differing 
from  the  Nicholson  in  nothing,  except  that  the  sides  of  the 
strips  were  not  parallel  with  each  other,  the  strips  being 
thicker  at  the  top  than  at  the  bottom  edge,  and  except  that 
the  upper  angles  of  the  strips  were  let  into  corresponding 
notches  cut  in  the  sides  of  the  blocks.  The  Supreme  Court 
held  that  though  this  change  in  the  form  of  the  blocks  and  of 
the  strips  might  constitute  an  improvement  in  point  of  utility, 
it  did  not  operate  to  avoid  infringement. 

§  369.  Patents  for  compositions  of  matter  give  rise  to  ques- 
tions of  infringement  somewhat  peculiar  to  themselves.  In- 


1  American  Diamond  Rock  Boring          *  Elizabeth  v.   Pavement    Co.    97 
Co.    v.    Sullivan    Machine    Co.    14      U.  S.  137,  1877. 
Blatch.  119,  1877. 


268  INFRINGEMENT.  [CHAP.  XVI. 

fringement  depends,  in  such  cases,  upon  sameness  or  equiva- 
lence of  ingredients,  and  upon  substantial  sameness  of  the 
proportions  of  those  ingredients.  Omission  of  one  or  more  of 
the  ingredients  of  a  patented  composition  of  matter,  avoids 
infringement,  as  truly  as  omission  of  one  of  its  parts  avoids  in- 
fringement of  a  patent  for  a  combination  of  mechanical 
devices.  Addition  to  a  patented  composition  of  matter,  of  an 
ingredient  which  the  patent  purposely  avoided,  and  which 
when  added  substantially  changes  the  character  of  the  compo- 
sition, also  avoids  infringement.1  But  an  addition  which 
results  in  no  substantial  change  of  character,  and  which  was 
made  merely  for  the  purpose  of  an  attempt  to  evade  the 
patent,  will  not  have  that  effect.* 

§  370.  Substitution  of  one  equivalent  for  another,  in  a 
patented  composition  of  matter,  is  generally  as  ineffectual  to 
avoid  infringement  as  is  like  substitution  in  a  machine.  An 
equivalent  for  one  ingredient  of  a  patented  composition  of 
matter  is  anything  which  in  that  composition  performs  the 
same  function  as  that  ingredient.3  In  the  case  cited,  it  was 
held  that  chloride  of  zinc  in  solution  was  an  equivalent  of 
common  dry  salt,  in  the  composition  of  matter  covered  by  the 
patent  at  bar,  "  because  in  the  process  of  manufacture  they 
practically  produce  the  same  results. ' '  No  attention  was  given 
to  the  question  whether  they  produced  that  result  in  substan- 
tially the  same  way.  So  also  the  Supreme  Court  has  held 
that  the  term  "  equivalent"  means  "  equally  good"  when  it 
refers  to  the  ingredients  of  compositions  of  matter.4  "Where 
the  composition  of  matter  involved,  is  a  compound  of  metals, 
an  equivalent  of  either  of  those,  is  another  metal  having 
similar  properties,  and  producing  substantially  the  same  effect 
in  that  composition.* 

§  371.  A  substituted  ingredient  may  perform  the  required 
function  better  than  the  patented  ingredient,  and  may  perform 

1  Byam  v.  Eddy,   2  Blatch.    521,  131,  1872. 

1853.  <  Tyler  v.  Boston,  7  Wallace,  330, 

1  Rich  v.  Lippincott,  2  Fisher,  6,  1868. 

1853.  *  Matthews  v.    Skates,   1   Fisher, 

1  Woodward  v.  Morrison,  1  Holmes,  609,  1860. 


CHAP.  XVI.]  INFRINGEMENT.  269 

that  function  in  a  somewhat  different  manner,  and  still  be  an 
equivalent  for  the  latter.1  In  the  case  cited  the  patent 
covered  a  compound  of  nitro-glycerine  and  absorbent  matter, 
of  which  infusorial  earth  was  stated  to  be  the  preferred 
variety.  The  absorbent  matter,  when  mixed  with  three  times 
its  weight  of  nitro-glycerine,  absorbed  the  whole,  and  still  re- 
tained the  form  of  a  powder.  This  compound  made  dyna- 
mite. The  defendant's  compound  consisted  of  nitro-glycerine 
and  mica  scales  mixed  in  nearly  equal  proportions,  the  mica 
scales  not  absorbing  the  nitro-glycerine,  but  merely  holding  it 
in  suspension  upon  their  surfaces.  This  compound  was  called 
mica  powder.  Its  use  at  the  Hoosac  Tunnel  demonstrated  its 
superiority  over  dynamite,  in  point  of  efficiency,  economy, 
and  safety  ;  and  there  is  evidently  a  difference  between  a 
powder  which  absorbs  a  liquid  as  in  minute  capillary  tubes,  and 
one  which  does  not  absorb,  but  which  carries  a  liquid  upon  the 
surfaces  of  its  particles.  But  notwithstanding  these  differences 
Judge  SHEPLEY  in  an  accomplished  opinion,  held  the  mica 
powder  to  infringe  the  dynamite  patent.  So  also,  in  a  later 
case  on  the  same  patent,"  the  same  judge  held  a  certain  gun- 
powder to  be  an  equivalent  of  the  infusorial  earth,  because  it 
performed  every  function  of  the  latter  substance,  though  it 
also  performed  the  additional  function,  at  the  time  of  the  ex- 
plosion of  the  compound,  of  co-operating  with  the  nitro- 
glycerine in  rending  the  rock,  instead  of  remaining,  like  in- 
fusorial earth,  an  inert  substance.  The  doctrine  which  results 
from  this  case  is  that  one  ingredient  is  an  equivalent  of 
another  in  a  composition  of  matter,  if  it  performs  the  same 
function,  even  though  it  also  performs  another  function, 
which  that  other  is  wholly  incompetent  to  accomplish. 

§  372.  "When  a  patent  expressly  states  that  the  composition 
of  matter  which  it  covers,  does  not  include  a  specified  ingre- 
dient of  similar  compositions,  the  substitution  of  that  ingre- 
dient for  one  of  those  covered  by  the  patent,  is  enough  to 
avoid  infringement,  even  though  the  two  ingredients  perform 

1  Atlantic  Giant   Powder    Co.    v.  s  Atlantic    Giant    Powder    Co.  v. 

Mowbray,  2  Bann.  &  Aid.  447,  1876.       Goodyear,  3  Bann.  &  Ard.  161,  1877. 


270  INFRINGEMENT.  [CHAP.  XVI. 

the  same  function  in  that  composition  of  matter.  But  this 
does  not  amount  to  saying  that  the  two  things  are  not  equiva- 
lents. It  merel  v  amounts  to  the  doctrine  that  a  patentee  may 
disclaim  a  particular  equivalent  if  he  chooses.1 

§  373.  Changes  of  the  proportions  of  the  ingredients  of  a 
composition  of  matter  will  not  avoid  infringement  of  a  patent 
for  such  a  composition,  where  those  changes  do  not  affect  its 
essential  character  in  any  way  more  important  than  to  increase 
its  bulk  more  than  they  increase  its  cost.* 

§  374.  The  doctrines  of  the  last  five  sections  appear  to  be 
applicable  to  compositions  of  matter  in  general,  whether  they 
consist  of  chemical  unions,  or  of  mechanical  mixtures,  or 
of  metal  amalgams.  Jurisprudence  will  doubtless  follow 
science,  if  science  hereafter  shows  any  reason  for  distinguishing 
between  the  different  classes  of  compositions  of  matter  in  re- 
spect of  questions  of  infringement  ;  but  no  sucli  distinctions  are 
yet  traceable  in  the  adjudicated  cases. 

§  375.  A  design  patent  is  infringed  by  any  design  which,  to 
observers  in  general,  has  the  same  appearance  as  that  of  the 
design  covered  by  the  patent.3  The  fact  that  an  analysis  of 
two  forms  of  design  discloses  differences  between  them,  is 
therefore  insufficient  to  show  lack  of  that  substantial  identity  of 
appearance,  which  constitutes  infringement.  Such  a  question 
of  identity  is  to  be  decided  on  the  basis  of  the  opinions  of 
average  observers,  and  not  upon  the  basis  of  the  opinions  of 
experts. 

§  376.  The  comparative  utility  of  the  plaintiff's  and  the 
defendant's  process,  machine,  manufacture,  or  composition  of 
matter,  is  not  alone  a  criterion  of  infringement  ;  because  the 
observed  superiority  of  one  over  the  other  may  have  arisen 
from  superiority  of  the  materials  or  of  the  workmanship  used 
in  constructing  the  specimens  under  inspection.  Indeed  it 
was  been  held  that  the  superiority  or  inferiority  of  utility  in  a 
defendant's  machine,  does  not  necessarily  import  non-infringe- 


1  Byam  v.  Fair,  1  Curtis,  260,  1852.  3  Gorham  v.    White,   14   Wallace, 

1  Eastman  v.  Hinckel,  5  Bann.  &      528, 1871  ;  Perry  v.  Starrett,  3  Bann. 
Ard.  1,  1879.  &  Aid.  485,  1878. 


CHAP.   XVI.]  INFRINGEMENT.  271 

ment,  even  where  it  can  be  traced  to  slight  differences  in 
mode  of  operation.1  No  man  is  permitted  to  evade  a  patent 
by  simply  constructing  the  patented  thing  so  imperfectly  that 
its  utility  is  diminished.4  On  the  other  hand,  a  defendant's 
machine  may  be  better  than  that  covered  by  the  patent  in  suit ; 
but  if  that  superiority  resulted  from  some  addition  to  the 
latter,  it  will  have  no  tendency  to  avoid  infringement.8  Nor 
is  infringement  avoided  by  the  fact  that  the  defendant  con- 
structed and  used  his  machine  to  produce  one  of  the  simpler 
of  the  forms  of  things  produced  by  the  machine  of  the  plain- 
tiff, and  was  thus  enabled  to  produce  a  larger  number  in  an 
equal  spaue  of  time.4  The  superiority  or  inferiority  of  a  de- 
fendant's process,  machine,  manufacture  or  composition  of  mat- 
ter, as  compared  with  that  covered  by  a  patent  upon  which  he  is 
sued,  can  generally  be  traced  to  its  cause.  When  that  can  be 
done,  attention  should  be  taken  from  the  difference  in  utility, 
to  the  cause  of  that  difference.  Non-infringement  will  result 
if  that  cause  is  such  a  difference  in  function,  mode  of  opera- 
tion, or  character  of  construction,  as.  is  of  itself  sufficient  to 
justify  that  conclusion.  In  some  cases,  however,  it  may  not 
be  possible  to  ascertain  the  cause  of  the  observed  difference  of 
utility  between  two  inventions,  or  to  detect  the  existence  of 
any  such  cause  otherwise  than  by  its  effects.  In  such  a  case, 
a  decided  difference  of  utility  is  evidence  tending  to  show  sub- 
stantial difference  between  the  characters  of  the  two  inven- 
tions.* When  evidence  of  difference  of  utility  between  a 
plaintiff's  invention  and  a  defendant's  doings,  is  introduced  on 
an  issue  of  infringement,  it  must  be  considered  only  in  con- 
nection with  all  the  other  evidence  upon  that  subject."  If 
considered  alone,  it  is  likely  to  mislead,  because  difference  of 
utility  often  springs  from  causes  which  do  not  constitute 
substantial  difference  of  invention. 

1  Waterbury  Brass  Co.  v.  Miller,  9  512,  1871. 

Blatch.  77,  1871.  4  Blanchard  v.   Beers,   2    Blatch. 

9  Chicago  Fruit  House  Co.  u.  Busch,  420,  1852. 

2    Bissell,    472,    1871  ;   Roberts    v.  6  Many   v.    Sizer,    1   Fisher,    27, 

Harnden,  2  Clif.  506,  1865.  1849. 

3  Pitts   u.  Wemple,  1  Bissell,  87,  « Singer  v.   Walmsley,    1   Fisher, 

1855  ;  Carter  v.   Baker,   1   Sawyer,  585,  1860. 


272  INFRINGEMENT.  [CHAP.  XVI. 

§  377.  To  constitute  an  infringement  of  a  patent,  it  is  not 
necessary  that  the  infringer  should  have  known  of  the  ex- 
istence of  the  patent  at  the  time  he  infringed  it  ; '  or,  know- 
ing of  its  existence,  it  is  not  necessary  that  he  should  have 
known  his  doings  to  constitute  an  infringement.* 

1  Parker  v.  Haworth,  4  McLean,          *  Parker  v.   Holme,  1  Fisher,  54, 
373,   1848  ;  Matthews  v.    Skates,    1       1849. 
Fisher,  698,  1860. 


CHAPTER  XVII. 
COURTS  PARTIES  AND  CAUSES. 


378.  Introductory  explanation. 

379.  Jurisdiction   of   United   States 
courts  of  first  resort  in  patent 
cases. 

380.  Question  of  the  jurisdiction  of 
State    courts    in    patent    cases 
stated. 

381.  Supported  in    the    affirmative 
from  ALEXANDER  HAMILTON. 

382.  Supported  in  the  negative  from 
Justice  STOBY. 

383.  Supported   in    the    affirmative 
from  Justice  WASHINGTON. 

384.  Supported  in  the  negative  from 
Chancellor  KENT. 

385.  Supported  in  the  negative  from 
Justice  FIELD. 

386.  Considered  in  the  light  of  all 
the  foregoing  opinions. 

387.  Supported  in  the  negative  by 
the  text-writer. 

388.  Jurisdiction    of     State    courts 
over  controversies  growing  out 
of    contracts    relevant    to  pat- 
ents. 

389.  Jurisdiction  of  individual  Unit- 
ed States  courts  of  first  resort 
in  patent  cases. 

390.  Exceptions  to  the  rules  of  the 
last  section. 

391.  Jurisdiction    of    the   Court   of 
Claims. 

392.  Question  of  the  jurisdiction  of 
the  Court  of  Claims  over  causes 
of  action  based  on  unauthorized 
making,  using,  or  selling  by  the 


United  States  Government  of 
specimens  of  a  patented  process 
or  thing. 

393.  Question  of  the  jurisdiction  of 
United    States    Circuit    Courts 
over    actions,  brought    against 
agents    of    the    United    States 
Government,  and  based  on  unau- 
thorized making,  using,  or  sell- 
ing, by  those  agents,  on  behalf 
of    the    government,   of   speci- 
mens of  a  patented  process  or 
thing. 

394.  Who  may  be  a  plaintiff  or  com- 
plainant in  a  patent  action. 

395.  Who  may  be  plaintiff  or  com- 
plainant in  an  action  based  on 
an  assigned  accrued  right  of  ac- 
tion for  infringement. 

396.  Executors   and    administrators 
as  plaintiffs  and  complainants. 

397.  Assignees  of  executors   or  ad- 
ministrators   as  plaintiffs    and 
complainants. 

398.  Attorneys  in    fact    cannot    be 
nominal  plaintiffs  or  complain- 
ants. 

399.  Owners  in    common  as    joint 
plaintiffs  or  complainants. 

400.  Licensees   cannot  be  nominal 
plaintiffs,  nor  sole  nominal  com- 
plainants. 

401.  Who  may  be  made  a  defendant 
in  a  patent  action. 

402.  Minors,    married    women    and 
lunatics  as  defendants. 


274 


COUETS    PARTIES   AND   CAUSES.  [CHAP.  XVII. 


403.  Agents,  salesmen,  and  employ- 
ees as  defendants. 

404.  Employers  as  defendants. 

405.  Persons  as  defendants  who  have 
caused  others  to  infringe. 

406.  Joint  infringers  as  defendants. 

407.  What  facts  constitute  joint  in- 
fringement. 

408.  Partners  as  defendants. 

409.  Private  corporations  as  defend- 
ants. 

410.  Officers,  directors,  and  stock- 
holders of  corporations  as  de- 
fendants. 


411.  The  same  subject  continued. 

412.  Stockholders  of  corporations. 

413.  Officers  of  corporations. 

414.  Directors  of  corporations. 

415.  Statutory  liability   of   officers, 
directors,   and   stockholders   of 
corporations. 

416.  Consolidated  corporations  as  de- 
fendants  in   actions   based    on 
infringements     committed     by 
their  constituent  corporations. 

417.  Causes  of  action  based  on  a 
plurality  of  patents,  or  on  both 
terms  of  an  extended  patent. 


§  378.  THE  foregoing  part  of  this  text-book  treats  of  the 
rights  of  inventors  and  patentees,  and  of  their  assignees, 
grantees,  licensees,  and  legal  representatives  ;  and  also  treats 
of  the  wrongs  which  are  committed  when  those  rights  are 
infringed.  The  remaining  part  explains  the  remedies  which 
may  be  invoked,  sometimes  to  prevent,  and  sometimes  to 
repair  such  wrongs  of  infringement.  The  present  chapter  is 
devoted  to  the  courts  which  may  originally  administer  those 
remedies  ;  and  to  the  parties  who  may  invoke  them,  and 
against  whom  they  may  be  invoked  ;  and  to  the  causes  of 
action  which  justify  patent  litigation  between  those  parties  in 
those  courts. 

§  379.  The  Circuit  Courts  of  the  United  States  have  original 
jurisdiction  of  all  suits  at  law  or  in  equity  arising  under  the 
patent  laws  of  the  United  States.1  The  District  Courts  of  the 
United  States  for  the  Western  District  of  Arkansas  ;  the  East- 
ern District  of  Arkansas  at  Helena  ;  the  Northern  District  of 
Mississippi  ;  the  Western  District  of  South  Carolina  ;  and  the 
District  of  West  Virginia  ;  have  the  same  jurisdiction  in 
patent  cases  that  the  Circuit  Courts  have  in  other  districts." 
The  same  jurisdiction  belongs  also  to  the  District  Courts  of 
the  Territories  of  Arizona,  Dakota,  Idaho,  Montana,  New 


1  Revised  Statutes,  Section  629. 
*  Revised  Statutes,  Section  571,  as 


amended  January  31,  1877,  19  Stat- 
utes at  Large,  Ch.  41,  p.  230. 


CHAP.   XVII.]  COURTS    PARTIES   AND   CAUSES.  275 

Mexico,  Utah,  Wyoming, l  and  Washington  ; "  and  to  the 
Supreme  Court  of  the  District  of  Columbia.3 

§  380.  Whether  State  courts  have  any  jurisdiction  of  actions 
for  infringements  of  patents,  is  a  question  of  great  interest, 
upon  which  it  is  not  possible,  at  this  writing,  to  give  a  positive 
answer.  Under  the  Revised  Statutes,  the  question  was  clearly 
answerable  in  the  negative  ; 4  but  in  1875  Congress  enacted  a 
statute  which  provided  :  "  That  the  circuit  courts  of  the 
United  States  shall  have  original  cognizance,  concurrent  with 
the  courts  of  the  several  States,  of  all  suits  of  a  civil  nature  at 
common  law  or  in  equity,  where  the  matter  in  dispute  exceeds, 
exclusive  of  costs,  the  sum  or  value  of  five  hundred  dollars, 
and  arising  under  the  Constitution  or  laws  of  the  United 
States."  5  The  constitutional  provision  relevant  to  the  subject 
is  that  :  "  The  judicial  Power  of  the  United  States,  shall  be 
vested  in  one  Supreme  Court,  and  in  such  inferior  Courts  as 
the  Congress  may  from  time  to  time  ordain  and  establish."  " 
In  view  of  this  organic  law,  it  is  certain  that  Congress  cannot 
confer  any  judicial  power  upon  any  other  than  Federal 
courts.7  Therefore  the  statute  of  1875  could  not  have  such 
an  operation,  even  if  it  purported  to  do  so,  and  it  does  not  so 
purport.  What  it  says  about  concurrent  jurisdiction  of  the 
State  courts,  is  by  way  of  recital,  rather  than  by  way  of  grant. 
It  appears  to  assume,  that  in  the  absence  of  congressional  pro- 
hibition, the  State  courts  would  inherently  have  concurrent 
jurisdiction,  and  it  removes  the  prohibition  contained  in  the 
Revised  Statutes.8 

The  real  question  therefore  is,  whether,  in  the  absence  of 
congressional  prohibition,  State  courts  have  jurisdiction  of 


1  Kevised  Statutes,  Section  1910.  5 18  Statutes  at  Large,  Part  3,  Ch. 

8  Revised  Statutes,   Section   1911,  137,  Section  1,  p.  470. 

as  amended  June  29,  1876,    19  Stat-  6  Constitution      of     the     United 

utes  at  Large,  Ch.  154,  p.  62.  States,  Article  3,  Section  1. 

3  Sections  760  and  764  of  the  Revised  7  Martin    v.    Hunter's    Lessee,    1 
Statutes  relating  to  the  District  of  Wheaton,    330,    1816  ;    Houston'  u. 
Columbia.     Cochrane  v.  Deener,  94  Moore,  5  Wheaton,  27,  1820. 

U.  8.  782,  1876.  s  Revised  Statutes,  Section  711. 

4  Revised  Statutes,  Section  711. 


276  COURTS    PARTIES    AKD    CAUSES.  [CHAP.  XVII. 

actions  arising  under  the  constitution  and  laws  of  the  United 
States.  Upon  that  question,  the  great  constitutional  lawyers 
who  have  treated  it,  differ  in  opinion. 

§  381.  The  first  in  point  of  time,  was  that  author  whose 
opinions  on  law  points  never  had  the  technical  force  of  judicial 
decisions,  but  whose  intellect  was  so  extensive  in  its  grasp, 
and  so  powerful  in  its  operation,  that  whatever  he  wrote  in  the 
Federalist,  is  worthy  to  be  cited  on  the  most  weighty  occa- 
sions. In  the  eighty-second  number  of  that  splendid  work, 
ALEXANDER  HAMILTON  treated  the  subject  now  under  review, 
and  treated  it  in  the  following  terms  : 

"  The  only  thing  in  the  proposed  constitution,  which  wears 
the  appearance  of  confining  the  causes  of  federal  cognizance  to 
the  federal  courts,  is  contained  in  this  passage  :  '  The  judi- 
cial power  of  the  United  States  shall  be  vested  in  one 
supreme  court,  and  in  such  inferior  courts  as  the  congress  shall 
from  time  to  time  ordain  and  establish.'  This  might  either 
be  construed  to  signify,  that  the  supreme  and  subordinate 
courts  of  the  union  should  alone  have  the  power  of  deciding 
those  causes,  to  which  their  authority  is  to  extend  ;  or  simply 
to  denote,  that  the  organs  of  the  national  judiciary  should  be 
one  supreme  court,  and  as  many  subordinate  courts  as  congress 
should  think  proper  to  appoint ;  in  other  words,  that  the 
United  States  should  exercise  the  judicial  power  with  which 
they  are  to  be  invested,  through  one  supreme  tribunal,  and  a 
certain  number  of  inferior  ones,  to  be  instituted  by  them.  The 
first  excludes,  the  last  admits,  the  concurrent  jurisdiction  of 
the  state  tribunals  :  and  as  the  first  would  amount  to  an  aliena- 
tion of  state  power  by  implication,  the  last  appears  to  me  the 
most  defensible  construction." 

"  But  this  doctrine  of  concurrent  jurisdiction,  is  only  clearly 
applicable  to  those  descriptions  of  causes,  of  which  the  state 
courts  have  previous  cognizance.  It  is  not  equally  evident  in 
relation  to  cases,  which  may  grow  out  of,  and  be  peculiar  to, 
the  constitution  to  be  established  ;  for  not  to  allow  the  state 
courts  a  right  of  jurisdiction  in  such  cases,  can  hardly  be  con- 
sidered as  the  abridgement  of  a  pre-existing  authority.  I  mean 
not  therefore  to  contend  that  the  United  States,  in  the  course 


CHAP.   XVII.]  COURTS    PARTIES    AND   CAUSES.  277 

of  legislation  upon  the  objects  intrusted  to  their  direction,  may 
not  commit  the  decision  of  causes  arising  upon  a  particular 
regulation,  to  the  federal  courts  solely,  if  such  a  measure 
should  be  deemed  expedient  :  but  I  hold  that  the  State  courts 
will  be  divested  of  no  part  of  their  primitive  jurisdiction, 
further  than  may  relate  to  an  appeal  ;  and  I  am  even  of  opin- 
ion that  in  every  case  in  which  they  were  not  expressly  ex- 
cluded by  the  future  acts  of  the  national  legislature,  they  will 
of  course  take  cognizance  of  the  causes  to  which  those  acts  may 
give  birth.  This  I  infer  from  the  nature  of  judiciary  power, 
and  from  the  general  genius  of  the  system.  The  judiciary 
power  of  every  government  looks  beyond  its  own  local  or 
municipal  laws,  and  in  civil  cases  lays  hold  of  all  subjects  of 
litigation  between  parties  within  its  jurisdiction,  though  the 
causes  of  dispute  are  relative  to  the  laws  of  the  most  distant 
part  of  the  globe.  Those  of  Japan,  not  less  than  of  New 
York,  may  furnish  the  objects  of  legal  discussion  to  our  courts. 
When  in  addition  to  this  we  consider  the  State  governments 
and  the  national  governments,  as  they  truly  are,  in  the  light 
of  kindred  systems,  and  as  parts  of  one  whole,  the  inference 
seems  to  be  conclusive,  that  the  State  courts  would  have  a  con- 
current jurisdiction,  in  all  cases  arising  under  the  laws  of  the 
union,  where  it  was  not  expressly  prohibited." 

§  382.  Justice  STORY,  on  the  other  hand,  delivered  an 
opinion  of  the  Supreme  Court  in  1816,  in  which  he  said  that  : 
"  It  can  only  be  in  those  cases  where,  previous  to  the  consti- 
tution, State  tribunals  possessed  jurisdiction  independent  of 
national  authority,  that  they  can  now  constitutionally  exercise 
a  concurrent  jurisdiction."  '  The  same  great  jurist  also  held 
the  same  opinion  in  his  Commentaries  on  the  Constitution.3 

§  383.  Justice  WASHINGTON,  on  the  contrary,  held  to  the 
views  of  HAMILTON.  When  delivering  the  leading  opinion  of 
the  Supreme  Court,  in  a  case  which  was  decided  in  1820,  he 
cited  HAMILTON'S  opinion  and  said  :  "I  can  discover,  I  confess, 
nothing  unreasonable  in  this  doctrine  ;  nor  can  I  perceive  any 


1  Martin     v.    Hunter's    Lessee,    1         2  Story  on  the  Constitution,  Sec- 
Wheaton,  337,  1816.  tion  1754. 


278  COUET8    PARTIES   AND   CAUSES.  [CHAP.   XVII. 

inconvenience  which  can  grow  out  of  it,  so  long  as  the  power  of 
Congress  to  withdraw  the  whole,  or  any  part  of  those  cases, 
from  the  jurisdiction  of  the  State  courts,  is,  as  I  think  it  must 
be,  admitted."  ' 

§  384.  Chancellor  KENT,  in  his  Commentaries,  reviewed  the 
opinions  of  HAMILTON,  STORY  and  WASHINGTON,  and  in  con- 
clusion stated  his  own  viewoii  the  subject  to  be  that  :  "  With- 
out an  express  provision  to  the  contrary,  the  State  courts  will 
retain  concurrent  jurisdiction,  in  all  cases  where  they  had 
jurisdiction  originally  over  the  subject-matter."8  Inasmuch 
as  patent  suits  are  outside  of  this  category,  the  opinion  of 
KENT  is  fairly  citable  with  that  of  STORY  on  the  negative  side 
of  the  question  now  under  review. 

§  385.  Justice  FIELD,  in  delivering  a  Supreme  Court  opinion 
in  1866,  quoted  extensively  from  the  opinion  delivered  by 
Justice  STORY  in  1816,  and  said  that  the  court  agreed  fully 
with  his  conclusion,  that  the  judicial  power  of  the  United 
States  is,  in  some  cases,  unavoidably  exclusive  of  all  State 
authority,  and  that  in  all  other  cases,  it  may  be  made  so  at  the 
election  of  Congress.3  In  a  later  case  the  same  justice  said, 
that :  "  In  some  cases,  from  their  character,  the  judicial  power 
is  necessarily  exclusive  of  all  State  authority  ;  in  other  cases 
it  may  be  made  so  at  the  option  of  Congress,  or  it  may  be  ex- 
ercised concurrently  with  that  of  the  States."4  In  a  still  later 
case  the  same  Justice  covered  the  point  in  explicit  terms,  saying 
that :  "  Some  cases  there  are,  it  is  true,  in  which,  from  their 
nature,  the  judicial  power  of  the  United  States,  when  invoked, 
is  exclusive  of  all  State  authority.  Such  are  cases  in  which 
the  United  States  are  parties,  cases  of  admiralty  and  maritime 
jurisdiction,  and  cases  for  the  enforcement  of  the  rights  of 
inventors  and  authors  under  the  laws  of  Congress."  5 

§  386.  But  neither  of  the  foregoing  five  Supreme  Court 
cases,  is  a  true  precedent  on  the  question  ;  for  though  that 

1  Houston  v.  Moore,  5  Wheaton,  429, 1866. 

26,  1820.  <  Kailroad     Co.    v.   Whitton,     13 

*  1    Kent's    Commentaries,  Lect-  Wallace,  288,  1871. 

are  XVIII.  p.  400.  «  Gaines  v.  Fuentes,  92  U.  S.  17, 

3  The   Moses  Taylor,    4  Wallace,  1875. 


CHAP.   XVII.]  COURTS    PARTIES   AND    CAUSES.  279 

question  was  recognized  and  answered  in  them  all,  it  was  not 
necessarily  involved  in  either.  The  remarks  which  those  cases 
contain  upon  the  subject  must  therefore  rest  for  their  weight 
as  authority,  upon  the  high  character  of  the  judges  who 
delivered  them,  and  not  on  that  of  the  court  which  decided 
the  cases.1  On  the  affirmative  of  the  issue  we  have  the 
opinion  and  the  reasons  of  HAMILTON,  indorsed  by  Justice 
WASHINGTON.  On  the  negative,  we  have  the  opinions  of 
Justice  STORY,  Chancellor  KENT  and  Justice  FIELD  ;  but  those 
opinions  are  not  accompanied  by  the  reasoning  out  of  which 
they  arose.  Therefore  it  may  not  be  amiss  to  examine  the 
point  fundamentally. 

§  387.  It  cannot,  be  claimed  that  the  Constitution  of  the 
United  States  confers  any  jurisdiction  on  any  State  court  ;  and 
it  is  clear  that  Congress  has  no  power  to  do  so.2  There- 
fore, if  such  courts  have  jurisdiction  of  patent  suits,  that 
jurisdiction  must  be  founded  on  some  general  principle  of 
jurisprudence,  existing  outside  of  written  edicts,  or  upon  the 
general  genius  of  our  composite  republic.  HAMILTON  inferred 
the  jurisdiction  from  both  these  considerations,  and  he 
assigned  no  other  ground  therefor. 

He  stated  his  first  premise  in  the  following  terms  :  "  The 
judiciary  power  of  every  government  looks  beyond  its  own 
local  or  municipal  laws,  and  in  civil  cases  lays  hold  of  all  sub- 
jects of  litigation  between  parties  within  its  jurisdiction,  though 
the  causes  of  dispute  are  relative  to  the  laws  of  the  most  dis- 
tant part  of  the  globe.  Those  of  Japan,  not  less  than  of  New 
York,  may  furnish  the  objects  of  legal  discussion  to  our 
courts."  But  this  premise  seems  to  be  broader  than  the  prin- 
ciples of  private  international  law  will  warrant.  It  is  a  maxim 
of  that  law,  that  whatever  force  the  laws  of  one  country  have 
in  another,  depends  solely  upon  the  jurisprudence  and  polity 
of  the  latter.3  Eights  originating  in  Japan,  may  be  enforced 
by  the  courts  of  New  York,  provided  similar  rights  exist  under 

1  United  Slates  v.  Lee,  106  U.  S.  Moore,  5  Wheaton,  27,  1820. 

217, 1882.  3  Story    on    Conflict    of     Laws, 

*  Martin  v.    Hunter's    Lessee,    1  Section.  23. 
Wheaton,   330,    1816 ;    Houston  v. 


280  COURTS    PARTIES   AND   CAUSES.  [CHAP.  XVII. 

the  laws  of  that  State  ;  but  HAMILTON  was  for  once  in  error, 
when  he  wrote  that  the  judiciary  power  of  every  government 
lays  hold  of  all  subjects  of  litigation  between  parties  within  its 
jurisdiction.  No  rights  are  more  universally  recognized 
throughout  the  world,  than  those  wliich  grow  out  of  private 
contracts  ;  but  not  every  private  contract,  made  in  Japan,  and 
legally  enforceable  there,  is  enforceable  in  the  courts  of  New 
York.  For  example,  those  courts  can  enforce  no  contract 
which  is  contrary  to  what  the  citizens  and  government  of  New 
York  regard  as  good  morals  ;  but  the  standard  of  good  morals 
in  New  York  is  different  from  that  which  prevails  in  Japan. 
There  is  said  to  be  a  statute  in  Japan  regulating  the  price  at 
which  girls  are  sold  by  their  parents.  There  is  no  such  statute 
in  New  York,  and  no  right  of  action  growing  out  of  any  such 
statute,  can  be  enforced  in  the  courts  of  that  State,  because 
the  polity  of  that  State  does  not  include  rights  of  property  in 
daughters.  Though  for  an  entirely  different  reason,  it  is 
equally  true  that  the  polity  of  the  State  of  New  York  does  not 
include  rights  of  property  in  inventions  ;  and  such  rights, 
being  outside  of  its  polity,  are  outside  of  the  judicial  cogni- 
zance of  its  courts.  Consistently  with  these  reasons,  Justice 
FIELD  remarked  that  cases  for  the  enforcement  of  rights  of 
inventors  and  authors,  are,  from  their  nature,  exclusively  cog- 
nizable in  the  United  States  courts.1 

HAMILTON  stated  his  second  premise  in  the  following  terms  : 
"  "When  we  consider  the  State  governments  and  the  national 
government,  as  they  truly  are,  in  the  light  of  kindred  systems, 
and  as  parts  of  one  whole,  the  inference  seems  to  be  conclusive, 
that  the  State  courts  would  have  concurrent  jurisdiction,  in  all 
cases  arising  under  the  laws  of  the  union,  where  it  was  not  ex- 
pressly prohibited."  This  reason  appears  to  be  faulty  in  both 
of  its  branches.  It  is  not  certain  that  kindred  governments 
will  always  enforce  each  other's  statutes.  Governments,  like 
persons,  may  be  kindred  and  still  be  substantially  different  in 
the  polity  which  controls  their  conduct.  So  also,  the  fact  that 
the  State  and  national  governments  form  parts  of  one  whole, 

1  Gaines  v.  Fuentes,  92  U.  S.  17,  1875. 


CITAP.  XVII.]  COURTS    PARTIES    AND    CAUSES.  281 

does  not  lead  to  the  conclusion  that  each  part  can  naturally  do 
whatever  any  other  part  can  accomplish.  We  are  indeed  one 
republic,  but  we  are  a  republic  of  departments.  Some  public 
business  belongs  to  the  national,  and  some  to  the  State  govern- 
ments, and  some  can  be  performed  by  either.  The  fact  of 
the  unity  of  the  republic  has  no  tendency  to  prove  what  are 
the  details  of  that  distribution.  No  State  can  perform  the 
functions  of  the  nation,  and  logically  allege  the  fact  that  it  is 
a  part  of  the  nation  to  be  a  sufficient  warrant  for  its  exercise 
of  national  jurisdiction. 

If  the  argument  of  this  section  is  correctly  drawn  from  cor- 
rect foundations,  it  will  follow  that  HAMILTON'S  opinion  is  not 
supported  by  his  reasons  ;  and  as  no  other  reasons  seem  ever  to 
have  been  given  for  the  jurisdiction  of  State  courts  over  patent 
suits,  it  is  probably  safe  to  conclude  that  those  courts  have  no 
such  jurisdiction. 

§  388.  Actions  brought  to  enforce  contracts  between  private 
parties,  relevant  to  patent  rights,  are  not  actions  arfsing  under 
the  patent  laws  of  the  United  States  ;  and  therefore  are  not 
cognizable  as  such,  in  the  United  States  courts.1  And 
actions  to  set  aside  such  contracts  fall  in  the  same  category.* 
These  rules  of  law  are  well  established,  and  are  unchallenged. 
But  a  bare  majority  of  a  small  quorum  of  the  Supreme  Court 
has  gone  further,  and  in  spite  of  a  vigorous  dissent  from  the 
minority,  has  held  another  doctrine  which  it  is  more  difficult 
to  vindicate  by  reasoning.  That  doctrine  is  as  follows.  Where 
a  complainant  files  a  bill,  in  which  he  states  a  patent  right, 
and  states  its  use  by  the  defendant ;  and,  in  a  charging  part, 
recites  the  particulars  of  an  alleged  license  claimed  by  the 
defendant  to  be  a  justification  of  that  use,  and  avers  that  there 
is  no  such  license  in  existence,  and  prays  for  an  injunction,  and 
an  account  of  infringer's  profits  ;  and  where  the  defendant 
files  an  answer,  admitting  the  patent  right,  and  admitting  the 
use,  and  defending  only  on  the  ground  of  the  alleged  license  ; 


1  Brown  v.  Shannon,   20  Howard,  s  Wilson    v.    Sandford,   10   How- 

56,  1857  ;  Albright  v.  Teas,  106  U.  S.       ard,  101,  1850. 
613,  1882. 


282  COURTS    PARTIES   AND   CAUSES.  [dlAP.  XVII. 

then  the  action  is  not  one  arising  under  the  patent  laws  of  the 
United  States.1  This  doctrine  was  held  by  Justices  CLIFFORD, 
MILLER,  FIELD,  and  HARLAN  ;  and  was  dissented  from  by 
Chief  Justice  WAITE  and  Justices  S WAYNE  and  BRADLEY.  The 
dissenting  opinion  of  the  latter,  is  one  of  the  most  perfect 
specimens  of  judicial  reasoning  to  be  found  in  the  Supreme 
Court  reports.  It  seems  to  the  text  writer  to  be  perfectly 
unanswerable,  and  he  cannot  forbear  to  praise  it,  while  yielding 
a  loyal  submission  to  the  conclusion  of  the  majority.  But 
there  is  no  warrant  for  pressing  that  conclusion  any  further 
than  it  necessarily  goes  :  no  warrant  for  applying  its  doctrine 
to  any  case  which  lacks  any  of  the  elements  upon  which  it  was 
based. 

Where  a  complainant  files  a  bill  in  which  he  states  a  patent 
right,  and  states  its  'use  by  the  defendant,  and  says  nothing 
about  any  contract  or  license,  and  prays  for  an  injunction  and 
an  account  of  infringer's  profits  ;  and  where  the  defendant 
thereupon  files  an  answer  in  which  he  does  not  traverse  any 
part  of  the  bill,  but  pleads,  by  way  of  confession  and  avoid- 
ance, that  he  has  a  license  which  covers  his  use  of  the  patent, 
it  will  not  do  to  apply  the  rule  in  Hartell  v.  Tilgliman.  If 
that  rule  were  applied  to  such  a  case,  it  would  result  in  a  dis- 
missal of  the  bill  for  want  of  jurisdiction.  Then  if  the  com- 
plainant should  file  a  new  bill  in  a  State  court,  precisely  like 
the  other,  and  if  the  defendant  should  thereupon  file  an  answer 
saying  nothing  about  any  license,  but  denying  the  validity  of 
the  patent,  that  suit  would  also  have  to  be  dismissed,  because 
it  would  present  no  controversy  except  one  touching  the  valid- 
ity of  a  patent  for  an  invention.  Any  infringer  of  a  patent 
could  thus  defeat  every  suit  based  on  his  infringement,  by  sim- 
ply making  one  defence  in  one  court,  and  another  defence  in 
another  court,  no  matter  how  weak  both  of  those  defences 
might  be.  A  consequence  so  unjust  cannot  be  tolerated  ;  and 
to  prevent  such  a  consequence  it  is  necessary  to  hold,  that 
where  a  plaintiff  decides  to  sue  a  defendant  as  a  naked  in- 
fringer, the  Federal  courts  have  jurisdiction,  and  that  such 

1  Hartell  u.  Tilghman,  99  U.  S.  647,  1878. 


CHAP.   XVII.]  COURTS    PARTIES    AND    CAUSES.  283 

jurisdiction  cannot  be  ousted  by  any  answer  which  the  defend- 
ant may  decide  to  interpose. 

§  389.  Actions  for  infringement  of  patents,  being  transitory 
in  their  nature,  may  generally  be  brought  in  any  district  in 
which  the  defendant  is  an  inhabitant  or  can  be  found.1 
Wherever  the  defendant  is  a  natural  person,  he  can  therefore 
be  sued  in  any  district  wherein  he  can  be  served  with  process  ; 
provided  he  is  not  decoyed  or  forced  into  that  district  for  that 
purpose,  nor  caught  there  when  attending  court  as  a  party  or  a 
witness.  But  where  the  defendant  is  a  corporation,  the  mat- 
ter of  finding  the  defendant  is  not  always  so  simple.  Being 
intangible,  a  corporation  cannot  be  seen  with  the  eyes,  as  a 
natural  person  can.  It  exists  ideally  throughout  the  territory 
of  the  State  which  created  it,  and  it  exists  nowhere  else.4  It 
can  be  found  wherever,  within  that  territory,  one  of  its  officers 
directors  or  agents  can  be  discovered.  Unless  prohibited  by 
its  charter,  or  excluded  by  local  law,  a  corporation  may  transact 
business  in  States  wherein  it  has  no  corporate  existence.3 
For  example,  a  Pennsylvania  corporation  may  do  business  in 
Xew  Jersey,  and  in  the  course  of  that  business  may  infringe  a 
patent  there.  Whether,  under  such  circumstances,  a  corpora- 
tion is  "  found  ''  in  New  Jersey,  by  a  United  States  marshal 
who  serves  process  upon  one  of  its  officers  or  agents  in  that 
State,  is  a  question  which  depends  upon  New  Jersey  law,  and 
one  which  that  law  answers  in  the  affirmative.4  A  correspond- 
ing question  is  answered  in  the  same  way  by  the  law  of  Illinois, 
though  the  Illinois  statute  which  bears  upon  the  subject,  is 
general  and  not  special,  like  that  of  New  Jersey.5  In  the  case 
last  cited,  the  business  which  the  defendant  Missouri  corpora- 
tion did  in  Illinois,  included  infringement  of  the  complainant's 
patent.  After  that  case  was  argued,  and  before  it  was  de- 
cided, the  present  text  writer  argued  a  case  before  the  same 

1  18   Statutes    at  Large,    Part   3,  S.  378, 1877. 

lapter  137,  Section  1,  p.  470.  4  Williams    v.    Empire   Transpor- 

8  Bank  of  Augusta  v.  Earle,  13  tation  Co.  3  Bann.  &  Ard.  533,  1878. 

Peters,  519,  1839  ;  Railroad  Co.  v.  6  Wilson  Packing  Co.  v.  Hunter, 

Wheeler,  1  Black,  286,  1861.  4  Bann.  &  Ard.  184,  1879. 

8  jEe  parle  Schollenberger,  96  U. 


COURTS    PARTIES    AND   CAUSES.  [CHAP.   XVII. 

distinguished  judge,  in  which  still  more  advanced  ground  was 
held  by  the  court.  In  that  case  the  United  States  Circuit 
Court  for  the  Northern  District  of  Illinois  held  that  it  had 
jurisdiction  of  a  bill,  filed  against  the  Grand  Trunk  Railway 
Co.  of  Canada,  and  based  on  infringement  committed  by  that 
corporation  in  Michigan  ;  service  having  been  made  on  an 
agent  of  the  corporation  in  its  office  in  the  Northern  District 
of  Illinois,  although  neither  that  agent,  nor  the  business  trans- 
acted in  that  office,  had  any  connection  with  the  infringement.1 
It  does  not  follow  from  either  of  the  foregoing  cases,  that 
every  corporation  is  found  wherever  one  of  its  officers  or  agents 
is  caught.  On  the  contrary,  it  is  not  possible  to  get  jurisdic- 
tion of  any  corporation  by  serving  process  on  even  its  presi- 
dent, unless  the  corporation  exists  under  the  laws  of  the  State 
wherein  the  service  is  made,  or  is  then  doing  some  corpo- 
rate business  in  that  State."  Nor  does  it  follow,  from  any- 
thing in  this  section,  that  every  corporation  can  be  sued  in  the 
Federal  courts  in  every  State  wherein  it  does  business. 
"Whether  that  is  the  case  in  a  particular  instance,  depends  upon 
the  statute  of  the  State  in  which  the  business  is  done.  It  is 
probable  that  no  State  allows  foreign  corporations  to  do  busi- 
ness within  its  territory  without  making  them  suable  in  its  own 
courts.  In  effecting  the  latter  result,  most  of  the  States  have 
probably  used  statutory  language  broad  enough  to  make  those 
corporations  equally  suable  in  those  Federal  courts  which  sit 
within  their  boundaries.  But  it  is  also  probable  that  some 
States  have  specified  the  particular  State  courts  in  which  for- 
eign corporations,  doing  business  within  their  limits,  shall  sub- 
mit to  be  sued,  and  have  not  used  language  broad  enough  to 
cover  the  Federal  courts.  Wherever  that  is  found  to  l;e 
the  fact,  it  is  an  omission  which  ought  to  be  remedied  by 
the  State  legislature,  for  it  is  clear  that  no  State  ought  to 
permit  any  foreign  corporation  to  come  into  its  territory,  and 
infringe  the  patents  of  its  citizens,  without  providing  that  such 
a  corporation  shall  consent  to  be  "  found"  within  that  State, 

1  Sayles  v.  Grand  Trunk  Railway  2  Wilson  Packing  Co.  v.  Hnnter, 

Co.,  Manuscript,  1879.  4  Bann.  &  Ard.  187,  1879. 


CHAP.   XVII.]  COURTS    PAETIES    AND    CAUSES.  285 

in  order  to  give  the  proper  courts  jurisdiction  to  administer  a 
remedy. 

§  390.  A  number  of  exceptions  exist  to  sundry  of  the  rules 
stated  in  the  last  section  ;  and  this  section  is  devoted  to  stating 
and  explaining  those  exceptions. 

Where  a  State  contains  more  than  one  district,  every  patent 
action  brought  in  that  State  against  a  single  defendant,  who 
is  an  inhabitant  of  that  State,  must  be  brought  in  the  dis- 
trict where  he  resides  ;  and  where  there  are  two  or  more  de- 
fendants residing  in  different  districts  of  a  State,  such  an 
action,  if  brought  against  them  in  that  State,  must  be  brought 
in  one  of  those  districts.1 

Where  a  district  contains  more  than  one  division,  every 
such  action  brought  in  that  district,  against  a  single  defendant 
who  is  an  inhabitant  of  that  State,  must  be  brought  in  the 
division  where  he  resides  ;  and  where  there  are  two  or  more 
defendants  residing  in  different  divisions  of  a  district,  such  an 
action,  if  brought  against  them  in  that  district,  must  be 
brought  in  one  of  those  divisions.  The  districts  to  which  this 
exception  applies  are  the  Southern  of  Georgia ; "  the  Dis- 
trict of  Iowa  ;'  the  Western  of  Michigan;4  the  Northern 
of  Ohio ; 5  the  Southern  of  Ohio  ;  '  the  Eastern  of  Tennes- 
see ; 7  the  Western  of  Tennessee  ; 8  and  the  Western  of  Mis- 
souri." 

The  Circuit  Court  for  the  Southern  District  of  New  York 
has  no  jurisdiction  of  any  action  based  on  any  infringement 
committed  in  the  Northern  District  of  the  same  State.10  It 
has  been  held  in  one  case  that  where  such  a  suit  is  brought 
in  the  Southern  District,  the  court  will  proceed  to  judgment 

1  Revised  Statutes,  Section  740.  Sec.  4,  p.  64. 

5  21  Statutes  at  Large,  Chap.  17,  '  21  Statutes  at  Large,  Chap.  203, 
Sec.  4,  p.  63.                                                 Sec.  5,  p.  176. 

3  21  Statutes  at  Large,  Chap.  120,  8  20  Statutes  at  Large,  Chap.  359, 
Sec.  2,  p.  155.  p.  236. 

4  20  Statutes  at  Large,  Chap.  326,  9  20  Statutes  at  Large,  Chap.   20, 
Sec.  3,  p.  176.  Sec.  3,  p.  263. 

6  20  Statutes  at  Large,  Chap.  169,  10  Revised  Statutes,    Section  657  ; 
Sec.  3,  p.  102.  Hodge  v.  Railroad  Co.  6  Blatch.  85, 

6  21   Statutes  at  Large,  Chap.  18,        1868. 


286  COURTS    PARTIES   AND    CAUSES.  [CHAP.  XVII. 

unless  the  defendant  sets  up  the  want  of  jurisdiction  in  his 
pleadings.1  But  this  was  apparently  an  error,  because  the 
Supreme  Court  has  decided  that  no  waiver  or  admission  of  the 
parties  can  give  a  court  jurisdiction  of  any  cause  of  which  the 
law  gives  it  no  jurisdiction.2  Courts  cannot  sit  as  arbitrators. 
Proceedings  outside  of  their  jurisdiction  are  void,  and  no 
waiver,  neglect,  or  admission  of  parties  can  make  thein  valid. 

§  391.  The  Court  of  Claims  is  the  tribunal  which  has  juris- 
diction of  all  actions  brought  by  owners  of  patent  rights 
against  the  government  of  the  United  States,  for  compensation 
for  implied  licenses  to  the  government,  to  make  and  use  pat- 
ented inventions.3  The  case  in  which  this  point  of  law  is 
established  was  decided  by  the  Court  of  Claims  in  1879,  and 
affirmed  by  the  Supreme  Court  November  20th,  1882.  No 
opinion  was  delivered  in  the  latter  tribunal,  though  the  ques- 
tions involved  in  the  case  were  both  new  and  important. 
This  omission  to  review  the  reasoning  of  the  court  below,  was 
a  deserved  compliment  to  Judge  NOTT,  who  delivered  the 
opinion  in  the  lower  tribunal.  That  opinion  is  one  of  the 
most  able  patent  case  opinions  ever  rendered  in  the  United 
States  ;  and  not  the  least  of  its  merits  resides  in  the  fact  that 
the  decision  is  confined  to  the  precise  issues  at  bar.  The  case 
being  founded  on  an  implied  contract  of  license  between  the 
patentee  and  the  government,  no  attempt  is  made  in  the  decis- 
ion to  show  whether  the  court  would  have  had  jurisdiction,  if 
the  doings  of  the  government  had  been  tortious. 

§  392.  What  remedy  a  patentee  has  when  the  government 
makes  or  uses  specimens  of  his  patented  invention  without  his 
consent,  is  a  question  to  which  no  positive  answer  can  at  pres- 
ent be  given.  All  claims  founded  upon  any  law  of  Congress 
are  cognizable  in  the  Court  of  Claims.*  Claims  for  infringe- 
ments of  patents  are  founded  on  the  patents  infringed,  and 
those  patents  are  founded  upon  a  law  of  Congress.  There- 
fore a  claim  for  an  infringement  is  ultimately  founded  on  a 

1  Black  v.  Thorn,  10  Blatch.   84,  »  McKeever  v.  United  States,  23 
1872.  Off.  Gaz.  1525,  1879. 

2  Hipp  v.  Babin,  19  Howard,  278,  4  Revised  Statutes,  Section  1059. 
1856. 


CHAP.   XVII.]  COURTS    PARTIES    AND   CAUSES.  287 

law  of  Congress.  It  might  thus  appear  that  the  Court  of 
Claims  has  jurisdiction  in  such  cases  ;  but  Justice  BRADLEY 
has  remarked  that,  "As  its  jurisdiction  does  not  extend  to 
torts,  there  might  be  some  difficulty,  as  the  law  now  stands, 
in  prosecuting  in  that  court  a  claim  for  the  unauthorized  use 
of  a  patented  invention."  '  But  perhaps  a  distinction  may  be 
drawn  between  torts  upon  ordinary  property  and  torts  upon 
patent  rights,  in  respect  of  this  question  of  jurisdiction.  Torts 
upon  ordinary  property  are  outside  the  jurisdiction  of  the 
Court  of  Claims,  because  they  cannot  be  said  to  be  founded 
upon  any  law  of  Congress,  and  because  the  jurisdictional  stat- 
ute contains  no  other  language  suitable  to  cover  them.  But 
torts  upon  patent  rights  are  ultimately  founded  upon  the 
patent  laws,  and  those  laws  are  laws  of  Congress. 

§  393.  But  whether  or  not  the  Court  of  Claims  has  jurisdic- 
tion of  a  case  based  upon  an  unauthorized  making  or  using  by 
the  government,  of  a  patented  invention,  it  is  important  to 
inquire  whether,  in  such  a  case,  an  action  will  lie  against  those 
agents  of  the  government  who  personally  committed  the  in- 
fringement. On  this  point  also  Justice  BRADLEY  stated  his 
opinion  in  an  obiter  dictum  in  the  case  last  cited,  saying  :  "  The 
course  adopted  in  the  present  case,  of  instituting  an  action 
against  a  public  officer,  who  acts  only  for  and  on  behalf  of  the 
government,  is  open  to  serious  objections.  "We  doubt  very 
much  whether  such  an  action  can  be  sustained.  It  is  substan- 
tially a  suit  against  the  United  States  itself,  which  cannot  be 
maintained  under  the  guise  of  a  suit  against  its  officers  and 
agents  except  in  the  manner  provided  by  law.  "We  have 
heretofore  expressed  our  views  on  this  subject  in  Carr  v. 
United  States,  98  U.  S.  433."  But  the  opinion  in  Carr  v. 
United  States  was  also  delivered  by  Justice  BRADLEY,  and  this 
part  of  it  was  afterward  held  by  the  Supreme  Court  to  be  an 
obiter  dictum,  and  to  be  unsound.2  The  reasoning  which,  in  the 
Lee  case,  carried  the  majority  of  the  Supreme  Court  to  the 
conclusion  that  agents  of  the  government  who  unlawfully  seize 

1  James  v.  Campbell,    104  U.   S.  2  United  States  u.  Lee,  106  U.  S. 

358,  1881.  216,  1882. 


288  COURTS    PARTIES    AND   CAUSES.  [CHAP.  XVII. 

and  hold  the  lands  of  the  citizen  may  be  sued  in  the  Circuit 
Courts,  must  ultimately  carry  that  tribunal  to  the  same  conclu- 
sion, relevant  to  governmental  agents  who  appropriate,  on  be- 
half of  the  government,  the  patent  rights  of  an  individual. 

§  394.  The  plaintiff  or  complainant  in  an  action  based  on  an 
infringement  of  a  patent  may  be  the  patentee,  or  the  sole  as- 
signee of  that  patent  ;  or  any  grantee  under  a  patent  may 
sue  alone,  for  any  infringement  committed  within  his  terri- 
tory.1 It  is  not  necessary  for  the  plaintiff,  in  an  action  at 
law,  to  own  any  interest  in  the  patent  at  the  time  he  brings 
his  action.  It  is  enough  if  he  was  the  patentee,  assignee,  or 
grantee  of  the  rights  infringed,  at  the  time  the  infringement 
sued  upon  was  committed.'  But  this  rule  does  not  generally 
apply  to  actions  in  equity,  for  such  actions  are  generally  de- 
pendent upon  an  injunction,  and  no  injunction  can  be  granted 
to  restrain  future  infringements  of  a  patent,  on  the  suit  of  a 
person  who  has  no  interest  in  the  patent  threatened  to  be  in- 
fringed. 

§  395.  Actions  at  law  brought  by  assignees  or  grantees,  for 
infringements  committed  prior  to  the  time  they  obtained 
title,  must  generally  be  brought  in  the  name  of  the  person 
who  held  the  legal  title  to  the  patent  right  when  and  where  it 
was  infringed  by  the  defendant.  This  common  law  rule  was 
not  abrogated  by  the  federal  statute  which  permitted  suits  to 
be  brought  by  assignees,  because  the  assignees  which  are  con- 
templated by  that  statute  are  assignees  of  patents,  and  not  as- 
signees of  rights  of  action  under  patents.3  Actions  in  equity, 
on  the  other  hand,  if  maintainable  at  all  in  such  a  case,  may 
be  brought  in  the  name  of  the  assignee  ;  and  such  an  action 
will  be  maintainable  where  the  suit  is  based  on  infringements 
and  threatened  infringements,  committed  after  the  complain- 
ant obtained  title,  as  well  as  upon  infringements  committed 
before  that  event.4  An  action  in  equity  will  also  be  main- 

1  Revised  Statutes,  Section  4919  ;  1868. 

Wilson  v.  Rousseau,  4  Howard,  646,  3  Moore  v.  Marsh,  7  Wallace,  516, 

1846  ;  Stein  v.  Goddard,   1  McAlis-  1868. 

ter,  82,  1856.  4  Dibble   v.  Augur,   7  Blatch.  86, 

.'Moore  v.  Marsh,  7  Wallace,  515,  1869  ;  Henry  v.  Stove  Co.,  2  Bann. 


CHAP.   XVII.]  COURTS    PARTIES   AND    CAUSES.  289 

tainable  in  such  a  case,  if  the  assignor  of  the  right  of  action 
was  a  corporation  and  has  been  dissolved  or  has  expired  ; '  or 
if  for  any  reason  it  is  impossible  for  the  assignee  of  the  right 
of  action  to  sue  in  the  name  of  the  assignor.2  Where  the  as- 
signor is  dead  at  the  time  the  assignee  desires  to  bring  an 
action  at  law,  and  where  no  legal  representative  of  the  assign- 
or exists,  or  is  likely  to  exist  unless  the  appointment  of  one  is 
obtained  for  the  special  purpose  of  using  his  name  as  nominal 
plaintiff  in  the  assignee's  suit,  it  would  seem  no  great  stretch  of 
equity  jurisdiction  to  allow  the  assignee  to  file  a  bill  in  his  own 
name,  and  thus  avoid  the  useless  and  expensive  circuity  of 
compelling  him  first  to  secure  the  appointment  of  an  adminis- 
trator, and  then  to  bring  an  action  at  law  in  the  name  of  the 
latter.  ~No  principle  adverse  to  such  a  proceeding  was  per- 
ceived by  Chief  Justice  MARSHALL,  when,  in  a  similar  case  of 
expensive  circuity  at  law,  the  more  direct  and  less  expensive 
methods  of  equity  were  invoked  before  him.3 

§  396..  "Where  a  patentee,  assignee,  or  grantee,  who  was  en- 
titled to  sue  for  an  infringement  of  a  patent,  died  before 
beginning  an  action  thereon,  such  an  action  may  be  brought 
by  his  executor  or  administrator,  upon  his  fulfilling  the  condi- 
tions, and  giving  the  guarantees  of  fidelity  and  solvency 
required  by  the  law  of  the  State  wherein  the  court  is  estab- 
lished in  which  the  action  is  proposed  to  be  brought.4  But 
it  is  not  certain,  that,  when  beginning  a  patent  action  in  a 
Federal  court  in  a  State  other  than  that  of  his  appointment, 
an  executor  or  administrator  must  conform  to  the  condi- 
tions, or  give  the  guarantees,  prescribed  by  the  local  laws.5 

&  Ard.  224,   1876  ;   Gordon   v.   An-  3  Riddle  v.  Mandeville,  5  Cranch,, 

thony,  16  Blatch.  234,   1879  ;   Mer-  329,  1809. 

riam  v.   Smith,   11   Fed.  Rep.  589,  4  Rubber  Co.  v.  Goodyear,  9  Wal- 

1882  ;  Shaw  v.  Lead  Co.,   11   Fed.  lace,  791,  1869  ;  Wilkins  v.  Ellett,  108 

Rep.   715,    1882  ;    Consolidated    Oil  U.  S.  256,  1882  ;  Roquet  v.  Swan,  3 

Well  Packer   Co.  v.  Eaton,  12  Fed.  Mason,  472,  1824. 

Rep.  870,  1882.  5  Hodge  v.  Railroad  Cos.  4  Fisher, 

1  Lenox    v.  Roberts,    2  Wheaton,  162,  1870  ;  Northwestern  Fire  Ex- 

373,  1817.  tinguisher  Co.  v-.  Philadelphia   Fire 

*  Hay  ward  v.  Andrews,  106  U.  S.  Extinguisher  Co.,  1  Bann.   &  Ard. 

675,  1882.  177,  1874. 


290  COURTS    PARTIES    AND    CAUSES.  [CHAP.   XVII. 

Whether  the  various  State  laws,  relevant  to  foreign  executors 
or  administrators  suing  in  State  courts,  are  binding  in  such 
cases  as  these,  is  a  point  upon  which  there  appears  to  be  a  con- 
flict of  authority.  The  cases  last  cited  appear  to  support  the 
negative  of  the  question,  while  those  cited  just  before  seem 
to  sustain  the  affirmative  view.  It  is  possible  that  a  distinc- 
tion may  be  drawn  on  this  point  between  actions  based  on 
patents,  and  actions  arising  out  of  local  law  and  brought  into 
Federal  courts  on  grounds  of  diverse  citizenship.  If  that  dis- 
tinction is  found  to  be  important,  it  may  lead  to  a  decision 
that  executors  and  administrators  may  begin  and  prosecute 
patent  cases  in  Federal  courts  in  States  other  than  that  of  their 
appointment,  without  any  regard  to  the  probate  or  other 
analogous  laws  of  those  States.  If  it  is  held  otherwise,  then 
the  laws  of  the  States  relevant  to  the  conditions  upon  which 
foreign  executors  or  administrators  are  permitted  to  sue  in 
their  courts  will  require  the  attention  of  the  practitioner  in 
such  cases.  In  some  States  those  conditions  amount  to  local 
probate,  and  in  others  they  amount  to  no  more  than  the  giv- 
ing of  a  bond  for  costs.  But  whether  onerous  or  easy,  and 
whether  necessary  or  unnecessary  to  be  regarded  in  patent 
cases,  an  omission  to  regard  them  cannot  be  availed  of  by  a 
defendant,  unless  availed  of  in  his  pleadings.1 

§  397.  Where  an  executor  or  administrator  of  a  deceased 
patentee,  or  assignee  or  grantee  of  a  patent  right,  assigns  that 
right  to  another,  or  assigns  to  another  a  right  of  action  for  its 
infringement  ;  that  other  can  sue  thereon  in  any  State  without 
any  proceedings  in  the  nature  of  local  probate  ;  provided  he 
can  sue  in  his  own  name."  Whether  he  can  sue  in  his  own 
name  will  depend  upon  whether  he  is  entitled  to  an  injunc- 
tion, or  if  not  entitled  to  an  injunction,  it  will  depend  upon 
whether  equity  can  take  jurisdiction  on  some  other  ground  ; 
or  if  not  entitled  to  sue  in  equity  at  all,  it  will  depend  upon 

1  Eubber  Co.  v.  Goodyear,  9  Wai-  ereaux  (N.  C.)  73,  1829  ;  Peterson  v. 
lace,  791,  1869.  Chemical  Bank,  32  N.  Y.  21,  1865  ; 

2  Harper  v.  Butler,  2   Peters,  238,  Riddick  v.    Moore,    65  N.    C.   382, 
1829  ;  Trecothick  v.  Austin,  4  Mason,  1871. 

36,  1825  ;  Leake  v.  Gilcbrist,  2  Dev- 


CHAP.   XVH.]  COTJKTS    PARTIES    AND   CAUSES.  291 

whether  the  laws  of  the  particular  State  authorize  assignees 
of  rights  of  action  to  bring  actions  at  law  in  their  own  respec- 
tive names. 

§  398.  Patentees  and  other  persons  entitled  to  bring  actions 
for  infringements  of  patents,  may  appoint  attorneys  in  fact  to 
bring  those  actions  in  the  names  of  the  appointors  ;  but  not 
in  the  names  of  the  attorneys  in  fact. ' 

§  399.  Owners  in  common  of  patent  rights  must  sue  jointly 
for  their  infringement,  or  the  defendant  may  plead  in  abate- 
ment. This  rule  applies  where  a  patentee  has  assigned  an  un- 
divided part  of  his  patent,2  and  also  to  cases  where  the  owner 
of  the  patent  has  granted  an  undivided  interest  therein,  in  that 
part  of  the  territory  of  the  United  States  wherein  the  infringe- 
ment sued  upon  was  committed.  In  the  first  of  these  cases 
the  action  must  be  brought  by  the  patentee  and  assignee 
jointly  ;  and  in  the  other  case  it  must  be  jointly  brought  by 
the  owner  of  the  patent  and  his  grantee.  Indeed  the  rule 
necessarily  applies  to  every  case  where  a  plurality  of  persons 
own  the  undivided  interest  in  a  patent  right,  whether  in  the 
whole,  or  only  in  a  part  of  the  territory  of  the  United  States. 

§  400.  Licensees  under  patents  cannot  bring  actions  for 
their  infringement.3  Where  a  person  has  received  an  ex- 
clusive license  to  use  or  to  sell  a  patented  invention  within  a 
specified  territory,  all  actions  at  law  against  persons  who,  with- 
out right,  have  done  anything  covered  by  the  license,  must  be 
brought  in  the  name  of  the  owner  of  the  patent  right,  but 
generally  for  the  use  of  the  licensee  ;  *  and  all  actions  in 
equity  must  be  brought  by  the  owner  of  the  patent  right  and 


1  Goldsmith     v.     Collar    Co.     18  149,    1872  ;   Nelson   v.    McMann,    4 

Blatch.  82,  1880.  Bann.  &  Ard.  203,  1879  ;  Gamewell 

8  Moore  v.  Marsh,  7  Wallace,  515,  Telegraph  Co.  v.  Brooklyn,  14  Fed. 

^868.  Rep.   255,    1882  ;    Ingalls  •  v.   Tice, 

3  Gayler  v.    Wilder,   10    Howard,  14  Fed.  Rep.  297,  1882  ;  Wilson  v. 

477,    1850,    Paper  Bag    Cases,    105  Chickering,  14  Fed.  Rep.  917,  1883. 

U.  S.  766,  1881  ;  Blanchard  v.  Eld-  4  Littlefield  v.  Perry,  21   Wallace, 

ridge,   1    Wallace,    Jr.    337,    1849  ;  223,  1874  ;  Goodyear  v.  McBurney, 

Potter   v.    Holland,    4   Blatch.  206,  3  Blatch.  32,  1853. 
1858  ;  Sanford  v.  Messer,  1  Holmes, 


292  COURTS    PARTIES    AND   CAUSES.  [CHAP.  XVII. 

the  licensee  suing  together  as  joint  complainants.1  Actions 
at  law  brought  in  the  name  of  the  owner  of  a  patent  right, 
but  actually  begun  by  an  exclusive  licensee,  may  be  maintained 
by  the  latter,  even  against  the  will  of  the  nominal  plaintiff." 
And  where  an  exclusive  licensee  brings  an  action  in  equity  in 
the  name  of  himself  and  the  owner  of  the  patent  right,  that 
action  may  be  maintained  without  the  co-operation  and  even 
against  the  objection  of  the  latter. 

Where  the  owner  of  a  patent  is  himself  an  inf ringer  of  a 
licensee's  exclusive  right  to  use  or  to  sell  the  invention  covered 
thereby,  no  action  at  law  can  remedy  the  wrong.  The 
licensee  cannot  bring  such  an  action  in  his  own  name  in  that 
case,  any  more  than  in  another  ;  and  he  cannot  sue  in  the  name 
of  the  wrong-doer,  for  he  would  thus  make  the  latter  both 
plaintiff  and  defendant.  Such  a  state  of  facts  constitutes  such 
an  impediment  to  an  action  at  law  as  authorizes  the  licensee 
to  sue  the  owner  of  the  patent  in  a  court  of  equity.3  Where 
an  exclusive  licensee,  who  pays  royalties  in  proportion  to  the 
extent  of  his  use  or  his  sales  of  the  patented  invention,  allows 
inf  ringers  to  use  or  to  sell  that  invention  without  interference 
from  him,  the  owner  of  the  patent  right  may  sue  those  in- 
f ringers  in  his  own  name  and  for  his  own  use.4 

§  401.  The  defendant  in  an  action  for  an  infringement  of 
a  patent  may  be  a  natural  person.  A  private  corporation 
may  also  be  held  liable  as  defendant  in  such  an  action.6 
Among  public  corporations,  the  liability  of  a  city  for  infring- 
ing a  patent  has  been  affirmed,8  and  that  of  a  county  has 
been  denied.7  The  ground  of  this  distinction  is  the  fact  that 
cities  are  created  and  exist  mainly  for  the  special  use  of  the 
people  who  compose  them  ;  while  counties  are  subdivisions  of 


1  Hammond   v.  Hnnt,  4  Bann.  &  1026,  1881. 

Ard.  113, 1879.  •  York  &  Maryland  Line  Kailroad 

4  Goodyear  v.  Bishop,   4  Blatch.  Co.  v.  Winans,  17  Howard,  30,  1854. 

438,  1860.  6  Bliss  v.  Brooklyn,  4  Fisher,  596, 

3  Littlefield  v.  Perry,  21  Wallace,  1871. 

223,  1874  ;  Koot  v.  Railway  Co.,  105  '  Jacobs   v.  Hamilton  County,   4 

U.  S.  216,  1881.  Fisher,  81,  1862. 

*  Still  v.  Beading,   20   Off.    Gaz. 


CHAP.  XVII.]  COURTS    PARTIES   AND    CAUSES.  293 

States,  made  for  the  purposes  of  political  organization,  and 
civil  and  judicial  administration.1  The  same  reasons  seem  to 
indicate  that  organized  villages  are  generally  liable  for  in- 
fringements, while  ordinary  townships  are  not.  The  general 
rule  on  the  subject  appears  to  be  that  cities  and  villages  are 
liable  for  infringements  of  patents,  unless  the  charters  or  stat- 
utes which  created  or  which  regulate  them  otherwise  require 
or  provide,  while  counties  and  townships  are  not  so  liable  un- 
less they  are  made  so  by  the  legislative  power  which  called 
them  into  being.  School  districts  probably  fall  in  the  same 
category  as  townships  in  respect  of  this  sort  of  liability.8  Of 
course,  no  State  can  be  sued  for  any  infringement  of  a  pat- 
ent ; 3  and  the  nation  cannot  be  sued  except  by  its  own  con- 
sent.4 Whether  that  consent  has  been  given  in  the  statute 
establishing  the  Court  of  Claims,  and  whether  agents  of  the 
national  government  are  liable  to  actions  for  infringements 
committed  by  them  in  its  behalf,  are  questions  which  are 
treated  in  Sections  392  and  393  of  this  book. 

§  402.  Natural  persons  cannot  escape  liability  for  their  in- 
fringements of  patents  on  the  ground  that  they  are  minors, 
married  women,  or  lunatics.6  A  minor  is  not  less  liable  to  an 
action  because  the  act  of  infringement  was  done  at  the  com- 
mand of  his  father  ; '  but  if  a  married  woman  commits  an  in- 
fringement in  the  presence  of  her  husband,  she  is  not  liable  to 
an  action  therefor,  unless  it  can  be  shown  that  she  did  it  with- 
out his  influence  or  consent.7  In  the  absence  of  such  evi- 
dence, the  husband  is  alone  liable  for  the  torts  of  the  wife 
which  are  committed  in  his  presence  ; 8  and  for  the  infringe- 
ments which  are  committed  jointly  by  both.9  The  only  dis- 

1  Ward  v.  County  of  Hartford,  12  5  Cooley  on  Torts,  Chapter  IV. 

Connecticut,    406,    1838  ;    Commis-  •  Humphreys  v.  Douglass,  10  Ver- 

sioners  of  Hamilton  County  v.  Mig-  mont,  71,  1838  ;  Scott  v.  Watson,  46 

hels,  7  Ohio  State,  118,  1857.  Maine,  362,  1859. 

8  Wilson    v.   School    District,   32  7  Bishop's      Law       of      Married 

New  Hampshire,  118,  1855.  Women,  Volume  2,  Section  258. 

3  Eleventh    Amendment    to    the  8  Bishop's      Law       of      Married 

Constitution  of  the  United  States.  Women,  Volume  1,  Section  43. 

*  United  States  v.  Lee,  106  U.  S.  •  Green   v.  Austin,    22  Off.   Gaz. 

204,  1882.  683,  1882. 


294  COURTS    PARTIES   AND   CAUSES.  [CHAP.  XVII. 

tinction  between  the  liability  of  lunatics  and  of  sane  persons, 
for  such  torts  as  infringements  of  patents,  seems  to  be  that  the 
former  can  never  be  held  liable  for  more  than  actual  damages.1 

§  403.  An  agent  or  salesman  who  sells  specimens  of  a 
patented  thing  on  commission  is  liable  as  an  infringer  for  so 
doing."  But  a  mechanic  who,  when  working  for  wages, 
makes  or  uses  a  patented  thing,  or  uses  a  patented  process,  at 
the  command  of  his  employer,  is  not  liable  to  an  action  at  law 
on  that  account,3  though  he  may  doubtless  be  restrained  by 
an  injunction  from  continuing  such  making  or  using.4  A  de- 
cree for  an  account  of  profits  would  not  be  proper  in  such  a 
case,  because  a  mechanic  cannot  be  said  to  make  any  profits 
from  such  an  infringement.  Nor  would  a  decree  for  damages 
be  any  more  proper  in  an  action  in  equity,  than  would  a 
judgment  for  damages  in  an  action  at  law. 

§  404.  Whoever  directs  or  requests  another  to  infringe  a 
patent  is  himself  liable  to  an  action  for  the  resulting  infringe- 
ment on  the  plain  principle  that  what  one  does  by  another  he 
does  by  himself.6  So,  also,  if  an  infringement  is  committed 
by  A.  B.,  for  the  benefit  of  C.  D.,  but  without  the  knowledge 
or  authority  of  the  latter,  the  latter  will  still  be  liable  as  an 
infringer,  if  he  approves  the  tort  after  its  commission.'  An 
infringement  which  is  committed  by  an  employee  in  the  regu- 
lar course  of  his  employer's  business  will  also  render  the  latter 
liable  to  an  action,  even  if  the  employer  forbade  the  acts 
which  constituted  the  infringement, 7  or  even  if  the  em- 
ployer did  not  know  that  such  was  the  character  of  those 
acts.8 

§  405.  It  is  a  general  principle  of  law,  that  whoever  does  an 

1  Cooley  on  Torts,  page  102.  K  Green  v.  Gardner,  22  Off.  Gaz- 

*  Potter  v.  Crowell,  3  Fisher,  112,       683, 1882. 

1866  ;  Maltby  v.   Bobo,    14  Blatch.  •  See  Judson  v.  Cook,  11  Barbour 

63,  1876  ;  Steiger  v.  Heidelberger,  4  (N.  Y.),  642,  1852  ;  Allred  v.  Bray,  41 

Fed.  Rep.  455,  1880.  Missouri,  484, 1867. 

*  Delano    v.    Scott,   Gilpin,    498,  '  See     Philadelphia    &    Reading 
1834  ;  United  Nickel  Co.  v.  Worth-  Railroad  Co.  v.  Derby,  14  Howard, 
ington,  13  Fed.  Rep.  393,  1882.  468,  1852. 

4  Goodyear u.Mullee,  5  Blatch.  437,  *  Wooster   v.    Marks,    17  Blatch, 

1867.  368,  1879. 


CHAP.   XVn.]  COTJKT8    PARTIES   AND   CAUSES.  295 

act  which  naturally  causes  another  to  commit  a  tort  is  him- 
self liable  to  an  action  therefor.1  The  applicability  of  this 
doctrine  to  patent  suits  is  a  subject  which  is  as  yet  almost 
wholly  unexamined  by  the  courts.  When  so  examined,  it  will 
probably  be  found  to  have  its  limitations.  If  A.  B.  unlaw- 
fully makes  a  specimen  of  a  patented  thing,  and  sells  it  to 
C.  I). ,  a  man  whose  business  it  is  to  use  things  of  that  class, 
there  seems  to  be  no  injustice. in  holding  the  former  responsi- 
ble, not  only  for  his  own  illegal  making  and  selling,  but  also 
for  the  illegal  using  committed  by  the  latter,  for  that  mak- 
ing and  selling  naturally  resulted  in  that  using.  On  the  other 
hand,  if  E.  F.,  a  merchant,  gives  G.  H.,  a  manufacturer,  an 
order  for  a  quantity  of  articles  which  may  be  made  either  with, 
or  without  a  particular  patented  machine,  and  if  G.  H.  makes 
those  articles  with  that  machine  because  he  ordinarily  and  nat- 
urally uses  that  machine  for.  such  .purposes,  it  seems  to  be 
clear  that  E.  F.  is  not  liable  for  that  unlawful  making.3 
But  if  I.  J.  unlawfully  makes  a  patented  machine  and  leases 
it  to  K.  L.  to  be  used,  it  seems  right  to  hold  the  former  liable 
to  an  action  for  that  use. 

§  406.  Where  several  persons  co-operate  in  any  infringe- 
ment, all  those  persons  are  of  course  liable  therefor.  In  that,  as 
in  all  cases  of  torts  for  which  several  persons  are  liable,  all  may 
be  sued  jointly,  or  any  of  them  may  be  sued  alone. 3  So,  also, 
an  action  may  be  brought  against  several  joint  defendants, 
and  sustained  against  such  of  them  as  the  evidence  shows 
to  be  liable,  even  though  not  sustained  against  all.4  Where 
an  action  at  law  is  sustained  against  several  joint  infringers, 
the  judgment  will  be  entered  against  all,  regardless  of  whether 
the  benefits  of  the  infringement  were  confined  to  part  of 
them,  or  extended  to  the  whole  ; 5  but  a  decree  for  profits 
in  an  action  in  equity  will  be  ejitered  only  against  those  of 

1  Guille  v.  Swan,  19  Johnson  (N.  Wheaton,  358,  1825. 
¥.),  381, 1822  ;  Brooks  v.  Ashburn,  9  3  Billiard    on   Torts,    Vol.   2,    p. 

Georgia,  297,  1851  ;  Lewis  v.  Johns,  242. 

34   California,  629,  1868  ;  Smith  v.  4  Reutgen  v.    Kanowrs,    1  Wash- 
Felt,  50  Barbour(N.  Y.),  612,  1868.  ington,  172,  1804. 

8  Keplinger      v.     De    Young,     10  5  Cooley  on  Torts,  p.  138. 


296  COURTS    PARTIES   AND    CAUSES.  [CHAP.  XVII.  . 

the  defendants  who  are  proven  to  have  actually  realized  prof- 
its from  the  infringement.1 

§  407.  The  facts  which  will  constitute  co-operative  joint  in- 
fringement fall,  when  analyzed,  into  a  large  number  of  classes. 
A  few  of  them  may  be  mentioned  in  this  section,  but  a  much 
larger  number  must  be  left  to  the  reflections  of  the  reader,  or 
to  the  development  of  litigation. 

Where  one  man  owns  and  others  operate  an  infringing 
machine,  all  are  jointly  liable  to  an  action  therefor.2  Where 
one  person  makes  and  sells  a  part  of  a  patented  combination, 
and  another  person  independently  makes  and  sells  the  residue 
of  that  combination,  both  intending  that  the  purchaser  shall 
assemble  the  parts,  and  use  the  combination,  there  the  maker 
and  seller  of  either  of  the  parts  is  liable  to  an  action  as  in- 
f ringer.3  So,  also,  where  a  person  makes  and  sells  a  compo- 
sition of  matter,  which  is  described  in  a  patent,  and  which  is 
useful  only  for  the  purpose  of  performing  a  process  covered 
by  that  patent,  there  also  the  maker  and  seller  is  liable  to  an 
action  at  law  or  in  equity.4  In  the  two  cases  last  cited,  the 
things  made  and  sold  by  the  defendants  were  not  only  in- 
tended to  be  combined  with  other  things  so  as  to  infringe  the 
patent,  but  they  were  in  fact  useless  for  any  other  purpose. 
Where  both  of  these  elements  are  absent,  there  is  no  infringe- 
ment in  making  and  selling  a  part  of  a  patented  combination, 
and  therefore  no  liability  to  any  action  for  an  infringement.5 
But  if  there  was  an  intention  that  the  thing  made  and  sold 
should  be  incorporated  into  the  patented  combination,  an  ac- 
tion for  infringement  cannot  be  defeated  by  showing  that  it 
could  have  been  used  for  some  purpose  alone,  or  in  unpat- 
ented  combinations.' 

§  408.  A  partnership  is  liable  to  an  action  for  an  infringe- 

1  Elizabeth  v.  Pavement  Co.  97  U.       Hecker,  2  Bann.  &  Ard.  363,  1876. 

8.  140,  1877.  6  Maynard  v.  Pawling,  5  Bann.  & 

1  Woodworth      v.     Edwards,  3       Ard.  551, 1880  ;  Millner  v.  Schofield, 

Woodbnry  &  Minot,  121,  1847.  4  Hughes,  261,  1881. 

8  Wallace  v.  Holmes,  9  Blatch.  73,           •  Saxe   v.   Hammond,    1   Holmes, 

1871.  456,  1875  ;  Bowker  v.  Dows,  3  Bann. 

4  Eumford    Chemical    Works  v.       &  Ard.  518,  1878. 


CHAP.  XVII.]  COURTS    PARTIES   AND    CAUSES.  297 

ment  committed  in  the  regular  course  of  the  partnership  busi- 
ness, by  one  or  more  of  the  partners,  or  under  his  or  their 
orders  ;  and  also  for  any  infringement  committed  outside  of 
that  regular  course  of  business,  if  it  was  previously  authorized 
or  afterward  adopted  as  the  act  of  the  partnership  by  all  the 
partners.  But  no  partnership  is  liable  for  any  infringement 
committed  outside  of  the  regular  course  of  the  partnership 
business,  unless  it  was  so  authorized  or  adopted. ' 

§  409.  Private  corporations  are  responsible  for  infringe- 
ments committed,  authorized,  or  ratified  by  them,  under  sub- 
stantially the  same  rules  as  those  which  govern  the  similar  re- 
sponsibility of  natural  persons.  It  was  formerly  supposed 
that  corporations  could  not  be  held  liable  for  torts,  because 
torts  are  never  authorized  by  corporate  charters,  and  are  there- 
fore ultra  vires.  But  this  idea  was  soon  found  to  produce 
gross  injustice  in  its  practical  operation  ;  and  was  therefore 
abandoned  by  the  courts.2  The  law  is,  that  every  private  cor- 
poration is  liable  for  all  the  torts  which  were  authorized  by 
that  corporation,  and  for  all  torts  done  in  pursuance  of  any 
authority  to  act  on  its  behalf,  on  the  subject  to  which  the 
torts  relate,  and  for  all  torts  ratified  by  the  corporation  after 
they  are  committed.  And  in  deciding  upon  this  liability,  the 
courts  consider  corporate  officers,  agents,  and  servants  as  pos- 
sessing a  large  discretion,  and  they  accordingly  hold  the  cor- 
poration liable  for  all  their  acts  within  the  most  extensive 
range  of  the  corporate  powers.3  The  agent  of  a  corporation 
in  committing  an  infringement  may  be  another  corporation  ; 
and  the  relation  of  agency  exists  and  binds  the  principal, 
where  the  agent  infringes  a  patent  in  authorized  pursuance  of 
the  business  which  the  principal  was  chartered  to  transact.4 
Unless  their  charters  otherwise  provide,  public  corporations 
which  are  liable  at  all  for  infringements  of  patents  are  doubt- 


1  See  Story  on  Partnership,  Sec-  8  See  Cooley  on  Torts,  p.  119. 

tions  166  and  168.  4  York  and  Maryland  Line  Eail- 

*  Baltimore     and    Potomac   Rail-  road  Co.  v.  Winans,  17  Howard,  38, 

road  Co.  ?).  Fifth  Baptist   Church,  1854. 
108  U.  S.  330,  1882. 


298  COURTS    PAETIES    AND   CAUSES.  [CHAP.  iVIL 

less  liable  under  the  same  circumstances  and  to  the  same  ex- 
tent as  private  corporations  are. 

§  410.  Under  what  circumstances  and  to  what  extent  an 
officer,  director,  or  stockholder  of  a  corporation  is  personally 
liable  for  infringements  committed  by  it,  are  questions  here- 
tofore but  seldom  and  but  slightly  examined  by  the  courts. 
It  has  been  adjudicated  that  where  persons  actively  and  per- 
sonally conduct  infringements  of  patents,  they  cannot  avert 
an  injunction  by  proving  that  they  acted  under  the  charter  of  a 
corporation,  and  as  officers,  directors,  or  stockholders  thereof. 
This  point  was  decided  by  Justice  NELSON  '  and  by  J  tidge 
W.  D.  SHIPMAN."  Judge  LOWELL  has  held  that  an  action  at 
law  cannot  be  maintained  against  the  officers,  directors,  or 
shareholders  of  a  corporation  which  infringes  a  patent,  even 
where  such  persons  personally  conducted  the  business  which 
constituted  the  infringement.'  If  that  is  the  law  upon  the 
point,  it  must  also  be  the  law  that  no  damages  can  be  recov- 
ered by  an  action  in  equity  against  any  such  person.  But  :fr 
will  not  follow,  where  profits  have  been  realized  by  persons 
from  infringements  committed  by  them  in  the  disguise  of  a 
corporation,  that  they  can  lawfully  retain  those  profits,  and 
leave  the  patentee  remediless.  And  it  is  possible  that  Judge 
LOWELL  is  wrong  in  his  opinion.  His  examination  of  the 
point,  does  not  appear  to  have  been  characterized  by  all  that 
thoroughness  with  which  his  judicial  opinions  are  generally 
developed  ;  and  he  himself  remarks  that  his  conclusion  is  con- 
trary to  what  counsel  had  conceded  in  several  earlier  cases. 
The  point  is  one  of  much  importance.  Upon  it  may  often 
depend  the  just  reward  of  invention,  and  the  just  punishment 
of  tort.  An  examination  of  the  subject  in  the  light  of  analy- 
sis and  of  analogies  may  therefore  be  acceptable  to  the  profes- 
sion, and  not  useless  to  the  courts. 

§  411.  Wrongs  are  divisible,  in  one  aspect,  into  two  classes  : 
wrongs  of  commission  and  wrongs  of  omission.  Where  an 
officer,  director,  or  stockholder  of  a  corporation  is  engaged  in 

1  Goodyear  v.  Phelps,    3  Blatch.       495,  1861. 

91,  1853.  »  United  Nickel  Co.  v.  Worthing- 

»  Poppenhusen  v.  Falke,  4  Blatch.       ton.  13  Fed.  Hep.  393,  1882. 


CHAP.  XVII.]  COURTS    PARTIES    AND   CAUSES.  299 

managing  its  business,  and  as  a  part  of  that  business  manages 
and  directs  the  infringement  of  a  patent,  that  person  is  charge- 
able with  a  wrong  of  commission.  Where  such  a  person  has 
power  to  prevent  his  corporation  from  infringing  a  patent,  and 
omits  to  exercise  that  power,  and  where  the  corporation  there- 
fore infringes  that  patent,  then  that  person  is  chargeable  with 
a  wrong  of  omission.  Where  a  person  is  an  officer,  director,  or 
stockholder  of  a  corporation,  but  has  no  personal  power  to 
cause  it  to  infringe  a  particular  patent,  nor  to  restrain  it  from 
so  doing,  that  person  is  chargeable  with  no  wrong  of  either 
sort. 

§  412.  Stockholders  seldom  have  any  power,  merely  as 
stockholders,  to  control  the  action  of  their  corporation  in 
such  a  matter  of  detail  as  the  infringement  of  a  particular  pat- 
ent. Unless  it  can  be  shown  that  the  stockholder  whom  it  is 
sought  to  hold  liable  in  a  particular  case  did  possess  power 
of  that  kind,  it  is  clear  that  the  common  law  will  not  compel 
him  to  respond  in  damages  for  any  infringement  with  which  he 
was  not  personally  connected.  If  the  law  were  otherwise  a  man 
could  lawfully  be  made  to  suffer  for  wrongs  which  he  did  not 
commit,  and  could  not  prevent,  and  from  which  he  received 
no  advantage.  Indeed  it  is  the  general  rule  of  the  common 
law,  that  mere  stockholders  in  a  corporation  are  not  liable  for 
its  debts,1  and  if  not  liable  for  its  debts,  they  surely,  ought 
not  to  be  liable  for  its  torts. 

§  413.  The  officers  of  a  corporation  are  the  persons  who  are 
charged  with  the  superintendence  and  control  of  its  transac- 
tions. It  is  doubtless  their  duty  to  refrain  from  directing  in- 
fringements to  be  committed  ;  and  also  to  prevent  the  agents 
and  servants  of  their  corporations  from  committing  infringe- 
ments of  patents,  when  prosecuting  the  corporate  business. 
If  such  an  officer  directs  and  causes  a  specific  thing  to  be 
done  which  turns  out  to  constitute  an  infringement,  it  is 
extremely  difficult  to  see  why  he  should  be  permitted  to  shift 
all  the  responsibility  for  the  tort  upon  the  intangible  corpora- 
tion, that  is  to  say  upon  the  innocent  stockholders  as  a  body. 

*  Shaw  v.  Boylon,  16  Indiana,  386,  1861. 


300  COURTS    PARTIES   AND   CAUSES.  [CHAP.   XVH. 

If  an  agent  or  a  servant  of  a  corporation  commits  an  in- 
fringement in  the  course  of  the  corporate  business,  the 
officers  whose  function  it  is  to  control  that  agent  or  that  ser- 
vant are  chargeable  with  a  wrong  of  omission.  They  are 
guilty  of  non-feasance  in  the  performance  of  their  official 
duties.  If  their  omission  to  prevent  the  infringement  ie  the 
result  of  gross  inattention  on  their  part,  they  are  liable  to  the 
corporation  for  any  loss  it  may  incur  on  account  of  the  in- 
fringement ;  but  it  is  otherwise  if  the  omission  resulted  from 
an  error  of  judgment.1  Whether  such  an  officer  is  liable  at 
common  law  to  the  owners  of  the  patent  infringed  seems  to 
depend  upon  other  considerations. 

If  an  officer,  in  pursuance  of  his  general  authority,  directs 
a  servant  of  a  corporation  to  make  a  machine  for  a  particular 
purpose,  which  machine  may  be  made  so  as  to  infringe  a 
patent,  or  may  be  made  so  as  not  to  have  that  effect,  it  seems 
that  the  officer  is  bound  to  see  that  it  is  not  made  so  as  to  in- 
fringe, and  that  if  the  servant  makes  it  in  that  way,  the 
officer  is  liable  to  the  patentee."  But  if  a  servant  of  a  cor- 
poration, without  any  special  orders  to  do  so,  makes  or  uses  or 
sells  a  thing  which  turns  out  to  be  an  infringement  of  a  patent, 
it  seems  that  no  superior  officer  is  personally  liable  therefor 
at  common  law.8  It  appears  reasonable  that  officers  of  corpo- 
rations should  be  bound  to  see  that  whatever  they  cause  to  be 
done  is  done  lawfully  ;  but  it  would  perhaps  not  be  ordinarily 
right  to  make  them  personally  responsible  to  strangers  for 
acts  spontaneously  committed  by  their  subordinates. 

§  414.  Directors  of  corporations,  unlike  other  officers,  act 
only  in  a  collective  capacity.  Where  an  entire  board  of 
directors  unanimously  orders  a  particular  thing  to  be  done 
which  will  constitute  an  infringement  of  a  patent,  and  where 
that  thing  is  accordingly  done  by  the  corporation's  agents 
or  servants,  there  seems  to  be  no  reason  why  those  directors 
should  not  be  held  personally  liable  to  an  action  for  that  in- 


1  Spering's  Appeal,  71  Pennsylva-       (Mass.)  425,  1862. 
nia  State,  11,  1872.  »  See  Bath  v.  Caton,  37  Michigan, 

*See  Hewett  v.    Swift,    3  Allen      202,  1877. 


CHAP.  XVII.]  COURTS    PARTIES    AND   CAUSES.  301 

fringement.  If  the  corporation  is  alone  liable  in  such  a  case, 
then  crafty  and  dishonest  men  may  often  manage  to  divide 
the  spoils  of  infringement,  and  leave  nothing  but  an  insolvent 
or  dormant  corporation  to  be  sued  by  the  patentee.  It  would 
evidently  be  a  reproach  to  our  laws  if  such  a  scheme  could  be 
made  to  work.  Whoever  attempts  to  defend  the  legal  safety 
of  such  a  mode  of  reaping  the  harvest  of  another,  should  have 
his  attention  called  to  the  following  sentence,  written  by 
Justice  CAMPBELL,  and  approved  by  the  Supreme  Court,  and 
worthy  to  be  quoted  in  every  law-book,  and  remembered 
by  every  man.  "  It  is  certainly  true  that  the  law  will  strip  a 
corporation  or  individual  of  every  disguise,  and  enforce  a 
responsibility  according  to  the  very  right,  in  despite  of  their 
artifices." 

Where  the  action  of  a  board  of  directors  in  ordering  an  in- 
fringement results  from  the  votes  of  a  majority  only,  the 
relations  of  the  minority  voters  to  the  resulting  infringement 
must  be  different  from  that  of  the  others.  The  members  of 
the  minority  ought  not,  in  such  a  case,  to  be  held  liable  for 
the  action  of  the  board,  or  for  its  results,  unless  they  afterward 
adopt  it  by  ratification.  Where  an  infringement  is  ordered 
by  a  quorum  of  a  board  of  directors,  in  the  absence  of  the  res- 
idue, the  residue  will  be  free  from  common  law  liability  for 
the  wrong  unless  they  afterward  ratify  it,  or  unless  they  are 
chargeable  with  such  gross  non-attendance  upon  the  meetings 
of  the  board  as  justly  causes  them  to  be  held  responsible  for 
whatever  is  done  by  their  colleagues  in  their  absence.  The 
mere  fact  of  being  a  director  in  a  corporation  is  not  sufficient 
to  render  a  person  liable  at  common  law  for  any  tort  commit- 
ted by  that  corporation  or  its  managers  or  agents.1 

§  415.  But  there  is  a  statutory  liability  in  such  cases  as 
those  which  we  are  considering.  Most  of  the  States  have 
statutes  which  provide  that,  under  various  circumstances 
therein  specified,  the  officers,  directors,  or  stockholders  of  a 


1  York  and  Maryland  Line  Rail-  2  Arthur   v.    Griswold,    55    New 

road  Co.  v.  Winans,  17  Howard,  40,       York,  406,  1874. 
1854. 


302  COURTS    PARTIES    AND    CAUSES  [oiIAP.  XVII. 

corporation  shall  be  personally  liable  for  its  debts  or  liabilities. 
Section  721  of  the  Revised  Statutes  of  the  United  States  pro- 
vides that  "  The  laws  of  the  several  States,  except  where 
the  Constitution,  treaties,  or  statutes  of  the  United  States  other- 
wise require  or  provide,  shall  be  regarded  as  rules  of  decision 
in  trials  at  common  law,  in  cases  where  they  apply."  Under 
this  section  of  the  Revised  Statutes,  these  laws  of  the  States 
will  probably  have  the  same  effect  in  a  patent  suit  in  a  United 
States  court,  that  they  would  have  in  any  action  of  trespass 
on  the  case  in  a  State  court.'  Such  of  the  State  statutes  re- 
ferred to  as  make  stockholders,  officers,  or  directors  respon- 
sible for  the  "  liabilities"  of  their  corporations  are  clearly 
broad  enough  to  cover  liabilities  arising  out  of  infringements 
of  patents.  Indeed  Justice  STORY  decided  that  such  liabilities 
were  covered  by  the  word  "  debts  "  in  such  a  statute.5  In 
most  of  the  States  the  statutory  individual  liability  of  officers, 
directors,  and  stockholders  of  corporations  is  more  limited  than 
it  was  in  Massachusetts  when  Justice  STORY  made  that  deci- 
sion. It  is  outside  the  scope  of  this  text-book  to  set  forth  the 
details  of  the  State  statutes  which  bear  upon  the  point.  It 
will  frequently  happen  that  the  controlling  legislative  edicts 
which  relate  to  the  matter  will  be  found  in  the  special  char- 
ters of  particular  corporations,  rather  than  in  the  general  stat- 
utes of  the  several  States.  The  general  principle  which  runs 
through  all  such  laws  seems  to  be  that  where  a  corporation  is 
so  managed  that  it  cannot  be  made  to  respond  to  lawful  claims 
based  on  its  contracts  or  torts,  those  officers  or  directors  who 
caused  that  inability,  or  those  officers,  directors,  or  stockholders 
who  profited  thereby,  shall  be  made  to  respond  in  its  place. 
§  416.  A  consolidated  corporation  is  liable  to  actions  in 


»  M'Cluny  v.   Silliman,   3  Peters,  537,  1867  ;  Parker  v.  Hall,  2  Fisher, 

270,  1830  ;   M'Neil  v.  Holbrook,  12  62,  1857  ;  Parker  v.  Hawk,  2  Fisher, 

Peters,  84, 1838  ;  Vance  v.  Campbell,  58,    1857  ;    Rich     v.     Eicketts,     7 

1  Black,  427,  1861  ;  Haussknecht  v.  Blatch.  230,  1870  ;  Hayden  v.  Ori- 

Claypool,  1  Black,  431, 1861  ;  Wright  entnl  Mills,  15  Fed.  Rep.  605.  1883. 

v.  Bales,  2  Black,  535,    1862  ;   Lef-  s  Carver  v.  Mfg.  Co.,  2  Story,  448, 

fingwell    v.  Warren,   2   Black,  599,  1843. 
1862  ;  Hanger  v.  Abbott,  6  Wallace, 


CHAP.   XVII.]  COURTS    PARTIES   AND   CAUSES.  303 

equity  for  infringements  committed  before  the  consolidation, 
by  each  of  its  constituents,  if  the  property  and  franchises 
which  the  consolidated  corporation  acquired  from  that  constit- 
uent, were  of  sufficient  value,  over  and  above  all  paramount 
claims,  to  equal  the  profits  or  damages  sought  to  be  recovered 
in  such  actions.1  This  proposition  results  from  the  fact  that 
equity  regards  the  property  of  a  corporation  as  held  in  trust 
for  the  payment  of  its  debts,  and  recognizes  the  right  of  cred- 
itors to  pursue  that  property  into  whosesoever  possession  it 
may  be  transferred,  unless  it  has  passed  into  the  hands  of  a 
bonafide  purchaser.2 

The  liability  of  consolidated  corporations  to  actions  at  law, 
for  infringements  committed  by  their  constituent  corporations, 
before  the  consolidation,  is  a  matter  which  does  not  rest  on 
common  law  principles,  so  much  as  upon  the  statutes  of  the 
States  wherein  those  consolidated  corporations  came  into 
being,  or  upon  the  private  Acts  which  authorized  the  consol- 
idations, or  upon  the  charters  of  the  constituent  or  of  the 
consolidated  companies.  Whenever  occasion  arises  to  hold  a 
consolidated  corporation  liable  to  an  action  at  law  for  such  a 
cause,  a  proper  authority  for  so  doing  can  probably  always  be 
found  in  one  or  another  of  these  sources. 

§  417.  A  plurality  of  patents  may  be  sued  .upon  in  one 
action,  where  the  inventions  covered  by  those  patents,  are 
embodied  in  one  infringing  process,  machine,  manufacture, 
or  composition  of  matter  ; 3  but  not  otherwise.4  But  any 
action  based  on  alleged  infringement,  in  one  process  or  thing, 
of  a  plurality  of  patents,  may  be  sustained  by  evidence  that 

1  Sayles  v.  The  Lake  Shore  and  3  Sawyer,  259,  1874  ;  Herman  Patent 

Michigan     Southern    Railway  Co.,  Mfg.  Co.  v.  Kailroad  Co.  15  Blatch. 

Manuscript,  1878.  444,    1879  ;     Gamewell    Fire-Alarm 

*  Mumina  v.  Potomac  Co.  8    Pe-  Telegraph  Co.  v.  Chillicothe,  7  Fed. 

ters,  286,    1834  ;   Curran   v.  Arkan-  Rep.  351,  1881  ;  Nellis  v.  Mfg.  Co.  13 

sas,  15  Howard,  311,  1853  ;  Railroad  Fed.  Rep.  451.  1882. 

Co.  v.  Howard,  7  Wallace,  409,  1868.  4  Nellis  v.   McLanahan,  6  Fisher, 

3  Seymour  v.  Osborne,  11  Wallace,  286,  1873  ;  Hayes  v.  Dayton,  8  Fed. 

616,  1870  ;  Bates  v.  Coe,   98   U.    S.  Rep.  702,  1880  ;  Barney  v.  Peck,  16 

48,  1878  ;  Nourse  v.  Allen,  3  Fisher,  Fed.  Rep.  413,  1883. 
63,   1859  ;  Gillespie  v.    Cummings, 


304:  COURTS    PARTIES    AND   CAUSES.  [CHAP.  XVII. 

one  of  those  patents  was  so  infringed,  though  the  others  were 
not ; '  and  an  action  brought  for  alleged  unlawful  making, 
using  and  selling  may  be  sustained  by  evidence  of  either  of 
those  three  sorts  of  infringement.*  So  also,  an  action  may 
be  based  on  infringement  committed  during  the  first  term, 
and  on  infringement  committed  during  an  extended  term,  of 
any  patent,  and  may  be  sustained  on  proof  of  either  or  both 
of  those  infringements. 

1  Matthews  v.  Mfg.  Co.  18  Blatch.  9  Locomotive  Truck  Co.    v.   RaU- 

86,  1880.  way  Co.  10  Blatch.  293,  1872. 


CHAPTER  XVIII. 

ACTIONS  AT  LAW. 


418.  Actions  of  trespass  on  the  case. 

419.  The  question  of   the  propriety 
of  actions  of  assumpsit  for  in- 
fringements of  patents,  consid- 
ered in  the  light  of  precedents. 

420.  Considered  in  the  light  of  ex- 
pediency. 

421.  Forms    of   civil     actions   pre- 
scribed   by    State  codes    and 
statutes  are  not  applicable  to 
patent  cases. 

422.  Declarations  in  trespass  on  the 
case. 

423.  The  statement  of  the  right  of 
action,  in  respect    of    the    in- 
ventor. 

424.  In  respect  of  the  novelty  and 
utility  of  the  invention. 

425.  In  respect  of  the  absence   of 
public  use   or  sale  more  than 
two  years  before  application  for 
a  patent. 

426.  In    respect    of    the    patentee, 
where  he  is  another   than  the 
inventor. 

427.  In  respect  of  the  application 
for  the  patent. 

428.  In  respect  of  the  letters  patent. 

429.  In  respect  of  a  reissue. 

430.  In  respect  of  a  disclaimer. 

431.  In  respect  of  an  extension. 

432.  In    respect    of    the  plaintiffs 
title. 

433.  In  respect  of  profert. 

434.  In  respect  of  infringement. 


435.  In  respect  of  the  time  of  in- 
fringement. 

436.  In  respect  of  the  damages. 

437.  The  conclusion  of   the   decla- 
ration. 

438.  Substantial  and  not  technical 
accuracy  required  in    declara- 
tions. 

439.  Dilatory  pleas. 

440.  Twenty-seven  defences  plead- 
able  in  bar  in  patent  actions. 

441.  The  twenty-seven  defences  re- 
viewed in  respect  of  their  na- 
tures and  effects. 

442.  Special  pleading. 

443.  The  general  issue  accompanied 
by  a  statutory  notice  of  special 
matter. 

444.  Notices  of  special  matter. 

445.  Defences    based    on  facts    of 
which  courts  take  judicial  no- 
tice, need  not  be  pleaded. 

446.  The  first  and  second  defences. 

447.  The  third  defence. 

448.  The  fourth  defence. 

449.  The  fifth  and  sixth  defences. 

450.  The  seventh  defence. 

451.  The  eighth  defence. 

452.  The  ninth  and  tenth  defences. 

453.  The  eleventh  defence. 

454.  The  twelfth  defence. 

455.  The  thirteenth  defence. 

456.  The  fourteenth  defence. 

457.  The  fifteenth  defence. 

458.  The  sixteenth  defence. 


306 


ACTIONS    AT    LAW. 


[CHAP.  xvnr. 


459.  The  seventeenth  defence. 

460.  The  eighteenth  defence. 

461.  The  nineteenth  defence. 

462.  The  twentieth  defence. 

463.  The  twenty-first  defence. 

464.  The  twenty-second  defence. 

465.  The  twenty -third  and  twenty- 
fourth  defences. 

466.  The  twenty-fifth  defence. 

467.  The      twenty-sixth     defence : 
estoppel. 

468.  Estoppel  by  matter  of  record  : 
res  j  ml  ii-i  itit. 

469.  Estoppel  by  matter  of  deed. 

470.  The  twenty-sixth  defence  ;  how 
pleaded. 

471.  The    twenty-seventh  defence  : 
statutes  of  limitation. 

472.  The  national  statute  of  limita- 
tion. 

473.  Its    operation    on  rights    of 
action    based     upon      patents 
•which  expired  prior  to  July  8, 
1864 ;  and  on  rights  of  action 
based  upon  patents   which  ex- 
pired   between  that   day    and 
JulyS,  1870. 

474.  Its    operation    on     rights     of 
action     based    upon    infringe- 
ments  committed   before  July 
8, 1870,  of  patents  which  were 
in  force  on  that  day  ;  and  on 
rights  of  action  based  upon  in- 
fringements of  patents  commit- 
ted after  that  day  and  before 
June  22,  1874. 

475.  Its  operation  on  rights  of  ac- 
tion based  upon  infringements 
of  original  terms  of  extended 
patents. 

476.  State  statutes  of  limitation  do 
not  apply  to  any  right  of  action 
which    is    attended  to  by  the 
national  statute  ;  that  is,  to  any 
right  of  action  based  on  an  in- 
fringement   committed    before 
June  22, 1874. 


477.  The  question  of  the  applicabil- 
ity of  State  statutes  of  limita- 
tion to  rights  of  action  for  in- 
fringements    committed     after 
June  22,  1874. 

478.  Keplications,    rejoinders,    and 
sur-re joinders,  where  licenses  or 
releases  are  pleaded. 

479.  Keplications,  where  the  national 
statute  of  limitation  is  pleaded. 

480.  Keplications    and    rejoinders, 
where  a  State  statute  of  limit- 
ation is  pleaded. 

481.  The  similiter. 

482.  Demurrers. 

483.  Demurrers  to  declarations. 

484.  Demurrers  to  pleas. 

485.  Demurrers  to  replications. 

486.  Joinders  in  demurrer. 

487.  Trial    of    actions  at  law    for 
infringement  of  patents. 

488.  Trial  by  jury. 

489.  Kules  of  practice. 

490.  Kules  of  evidence. 

491.  Letters  patent  as  evidence. 

492.  Keissue  letters  patent  are  pri- 
ma  facie  evidence  of  their  own 
validity. 

493.  Extensions  of  patents  are  prima 
facie  evidence  of  their  own  va- 
lidity. 

494.  Letters  patent  presumed  to  be 
in  force  till  the  end  of  the  term 
expressed  on  their  face. 

495.  Evidence  of  title. 

496.  Neither  licenses,   releases,  nor 
omission  to  mark  "patented" 
need  be  negatived  in  a  plain- 
tiff's prima  facie  evidence. 

497.  Evidence    of    the  defendant's 
doings. 

498.  Expert   evidence  of    infringe- 
ment. 

499.  Hypothetical  questions  for  ex- 
perts. 

500.  Expert  testimony  relevant  to 
the  state  of  the  art. 


CHAP.  XVIII.] 


ACTIONS    AT   LAW. 


307 


501.  Cross-examination  of  experts. 

602.  Evidence  of  damages. 

603.  Defendant's  evidence  in  chief. 

504.  Evidence   to   sustain  the  first 
defence. 

505.  To  sustain  the  second  defence. 

506.  To  sustain  the  third  defence, 
when  based  on  prior  patents. 

507.  When  based  on  prior  printed 
publications. 

508.  When  based   on   prior  knowl- 
edge or  use. 

609.  Rebutting  evidence  to  the 
third  defence,  when  based  on 
prior  knowledge  or  use. 

510.  Eebutting     evidence     to     the 
third  defence,  however  based. 

511.  Evidence  to  sustain  the  fourth 
defence. 

512.  To  sustain  the  fifth  defence. 

513.  The  sixth  defence. 

514.  The  seventh  defence. 

515.  The  eighth  defence. 

516.  The  ninth  defence. 

517.  The  tenth  defence. 

518.  The  eleventh  defence. 

519.  The  twelfth  defence. 

520.  The  thirteenth  defence. 

521.  The  fourteenth  defence. 

522.  The  fifteenth  defence. 

523.  The  sixteenth  defence. 

524.  The  seventeenth  defence. 

525.  The  eighteenth  defence. 

526.  The  nineteenth  defence. 

527.  The  twentieth  defence. 

528.  The  twenty-first  defence. 


529.  The  twenty-second  defence. 

530.  The  twenty-third  defence. 

531.  The  twenty-fourth  defence. 

532.  The  twenty-fifth  defence. 

533.  The  twenty-sixth  defence. 

534.  The  twenty-seventh  defence. 

535.  How  testimony  is  taken  in  ac- 
tions at  law. 

536.  When  the  judge  may  direct  the 
jury  to  return  a  verdict  for  the 
defendant. 

537.  Instructions  to  juries. 

538.  Verdicts. 

539.  New  trials. 

540.  Trials  by  a  judge  without  a 
jury. 

541.  Trial  by  referee. 

542.  Judgments. 

543.  Costs. 

544.  Costs  under  the  statute. 

545.  Attorney's  docket  fees. 

546.  Clerk's  fees. 

547.  Magistrate's  fees. 

548.  Witness  fees. 

549.  Taxation  of  costs. 

550.  Writs  of  error. 

551.  Bills  of  exception. 

552.  Erroneous    instructions,     and 
refusals  to  instruct. 

553.  Exceptions  to  instructions,  and 
to  refusals  to  instruct. 

554.  Time  when  exceptions  must  be 
noted,  and  time  when  bills  of 
exception    must  be  drawn  up 
and  signed. 


§  418.  AN  action  of  trespass  on  the  case,  is  prescribed  by 
the  United  States  statutes,  as  the  proper  legal  remedy,  for  in- 
fringements of  patents. '  Patent  rights  are  not  based  upon  the 
common  law  ;  but  are  founded  wholly  upon  the  Constitution 
and  statutes  of  the  United  States.*  Where  a  statute  creates  a 
right,  and  prescribes  a  legal  remedy  for  its  enforcement ;  it  is 


1  Revised  Statutes,  Section  4919. 


*  Section  149  of  this  book. 


308  ACTIONS   AT   LAW.  [CHAP.  XVIIL 

the  general  rale,  that  no  other  common  law  remedy  can  be 
used  for  that  purpose.1  Unless  patent  rights  are  exempt 
from  this  rule,  it  will  follow  that  an  action  of  trespass  on  the 
case  is  the  only  action  which  United  States  courts  can  entertain, 
when  sitting  as  common  law  courts  in  patent  cases.  Whether 
patent  rights  are  thus  exempt,  is  a  question  which  once  arose 
in  a  Supreme  Court  case,  but  which  was  not  decided  because 
it  was  apparently  overlooked  by  the  counsel  and  by  the  court. 

The  case  was  that  of  the  Packet  Co.  v.  Sickles.  It  was 
originally  an  action  of  assumpsit,  based  on  an  alleged  contract 
between  the  parties,  relevant  to  compensation  for  the  use  of  a 
patented  machine.  A  recovery  was  adjudged  on  that  contract 
in  the  court  below  ;  but  the  Supreme  Court  reversed  the  judg- 
ment on  the  ground  that  the  contract  was  not  in  writing,  and 
was  not  to  be  performed  within  one  year,  and  was  therefore 
void  under  the  statute  of  frauds.4  On  the  case  being  re- 
manded, the  plaintiff  amended  the  declaration  by  adding  two 
counts  in  assumpsit  for  money  had  and  received.  The  case 
was  thus  changed  from  an  action  of  assumpsit  on  a  contract, 
to  an  action  of  assumpsit  to  recover  compensation  for  the  in- 
fringement of  a  patent.  The  defendant  did  not  notice  the 
quebtionable  propriety  of  an  action  of  assumpsit  for  that  pur- 
pose, and  therefore  pleaded  non-assumpsit.  The  jury  found 
for  the  plaintiff,  and  having  been  instructed  by  the  court  to 
assess  the  damages  on  the  basis  of  the  value  of  the  use  of  the 
machine,  it  rendered  a  verdict  for  $11,333,  with  interest  from 
the  day  when  the  suit  was  brought. 

Now  if  an  action  of  assumpsit  had  been  proper,  it  would  be 
difficult  to  show  any  impropriety  in  the  charge  of  the  court, 
though  in  an  action  of  trespass  on  the  case  it  would  have  been 
clearly  wrong."  When  the  case  again  reached  the  Supreme 
Court,  it  was  again  reversed  ;  this  time  because  the  charge  did 
not  confortn  to  the  precedents  relevant  to  the  measure  of 
damages  in  actions  at  law  for  infringements  of  patents.  But 

'  Wiley  v.  Yale,  1  Metcalf  (Mass.)  9  Packet  Co.  v.  Sickles,  5  Wallace, 

554,  1840  ;  Elder  v.  Bemis,  2  Metcalf  580,  1866. 

(Mass.)  604,  1841  ;  Smith  v.  Wood-  3  Seymonr  v.  McCormick,  16  How- 
man,  8  Foster  (28  N.  H.)  528,  1854.  ard.  480,  1853. 


CHAP.   XVITI.]  ACTIONS    AT   LAW.  309 

no  due  notice  appears  to  have  been  taken  of  the  fact  that  the 
case  at  bar  was  an  action  of  assumpsit,  while  those  precedents 
had  been  established  in  actions  of  trespass  on  the  case. '  Had 
that  distinction  been  attended  to,  the  court  could  hardly  have 
sustained  the  propriety  of  the  form  of  action,  and  at  the  same 
time  have  reversed  the  case  for  error  in  the  charge.  The  suit 
was  treated  precisely  as  though  it  had  been  an  action  of  tres- 
pass on  the  case.  If  the  court  had  meant  to  affirm  the  pro- 
priety of  actions  of  assumpsit  for  infringements  of  patents,  it 
would  not  have  so  treated  the  suit ;  for  its  ruling  would  seem 
to  be  inappropriate  to  that  form  of  action.  The  precedent  is 
therefore  not  fairly  citable  on  either  side  of  the  question  of  the 
propriety  of  an  action  of  aesumpsit  for  the  infringement  of  a 
patent. 

§  419.  That  an  action  of  assumpsit  may  be  based  on  an  in- 
fringement of  a  patent,  has  been  stated  to  be  the  law  by  at 
least  two  United  States  judges." 

In  the  first  case  cited,  Judge  HUGHES  said  :  "  Let  us  now 
suppose  the  case  of  a  person  who  takes  possession  of  and  uses 
another's  horse,  wagon  and  team,  or  threshing-machine,  with- 
out his  knowledge,  consent,  or  authority In  such 

a  case,  the  owner  may  recover  damages  in  trespass  for  the  tort ; 
or  he  may  waive  the  tort,  and  sue  in  assumpsit  on  the  implied 
promise  to  pay  what  is  equitably  due  for  the  use  and  posses- 
sion of  the  property The  case  I  have  supposed  is, 

in  principle,  precisely  the  case  we  have  at  bar,  for  there  is  no 
magical  quality  in  the  property  of  a  patentee  in  his  patent  to 
distinguish  this  case  from  the  one  just  supposed,  where  ordinary 
property  had  been  taken  and  used  without  the  owner's  con- 
sent  The  act  of  the  defendant  was  nothing  but 

the  simple  one  of  a  person  taking  and  using  another's  property, 
without  authority,  to  his  own  advantage,  and  incurring  a  lia- 
bility to  compensate  the  owner  for  such  use  of  the  property. 


>  Packet  Co.  v.  Sickles,  19  Wai-  4  Bann.  &  AM.  245,  1879  ;    Steam 

lace,  617,  1873.  Stone  Cutter  Co.  v.   Sheldons,    15 

*  Sayles  v.  Richmond,  Fredericks-  Fed.  Rep.  609,  1883. 
burg  &  Potomac  Railroad  Company, 


310  ACTIONS   AT   LAW.  [CHAP.   XVHI. 

The  case  is,  in  principle,  precisely  identical  with  that  of  such  a 
nse  of  a  horse,  or  a  boat,  or  a  wagon  and  team,  or  threshing- 
machine — giving  a  right  of  action  in  assumpsit." 

In  the  second  case  Judge  WHEELER  said  :  "  When  the 
Windsor  Manufacturing  Company  sold  machines,  embodying 
these  inventions,  to  the  defendants  for  use,  it  invaded  the 
orator's  rights  and  converted  the  orator's  property  to  its  own 
use.  These  acts  were  tortious,  and  an  action  would  lie  for  these 
wrongs.  As  that  company  received  money  for  the  orator's 
property,  the  orator  could  waive  the  tort,  and  sue  in  assumpsit 
for  the  money,  or,  what  is  the  same  in  effect,  proceed  for 
an  account  of  the  money  received.  In  an  action  or  pro- 
ceeding for  the  money,  the  measure  of  damages  would  be  the 
amount  of  money  received,  not  the  amount  of  damage  done, 
and  all  right  of  recovery  beyond  that  would  be  waived." 

§  420.  It  is  against  the  policy  of  the  law  that  the  owner  of 
a  patent  right  should  lose  by  reason  of  its  infringement.  To 
prevent  such  a  result,  the  action  of  trespass  on  the  case  is  well 
adapted,  because  it  measures  the  plaintiff's  recovery  by  the 
plaintiff's  loss.  But  it  is  also  against  the  policy  of  the  law  that 
an  infringer  should  gain  by  reason  of  his  infringement.  To 
prevent  such  a  result,  the  action  of  trespass  on  the  case  is  not 
well  adapted,  because  an  infringer  may  often  gain  far  more 
than  the  patentee  loses  by  reason  of  the  wrongful  act  of  the 
former.  Patents  are  peculiar  property  in  this  respect.  A 
horse  or  a  wagon  is  worth  about  as  much  to  one  man  as  to 
another,  but  the  use  of  a  patent  may  be  worth  ten  times  as 
much  to  a  rich  infringer  as  to  a  poor  patentee.  It  would  be 
a  reproach  to  the  patent  laws  if  any  infringer  could  unlaw- 
fully make,  use,  and  sell  specimens  of  his  neighbor's  patented 
invention,  and,  when  called  to  account  in  a  court  of  justice, 
could  cancel  his  liability  by  paying  one  tenth  of  the  proceeds 
of  his  tort  to  the  owner  of  the  patent.  No  complete  system 
of  law  offers  such  a  premium  for  its  own  violation.  To 
prevent  such  failures  of  justice,  it  was  long  the  theory  and  the 
practice  of  the  United  States  courts,  that  equity  had  jurisdic- 
tion to  enforce  a  patentee's  right  to  recover  an  inf ringer's  prof- 
its, independently  of  all  other  equitable  titles,  rights,  and 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  311 

remedies.1  But  that  theory  was  overruled,  and  that  practice 
was  stopped  by  the  Supreme  Court,  in  the  case  of  Root  v. 
Railway  Co."  The  new  rule  which  was  stated  and  enforced 
in  that  case,  calls  aloud  upon  courts  of  law  to  entertain  actions 
of  assumpsit  for  infringements  of  patents,  if  by  any  means 
they  can  find  authority  for  so  doing.  If  no  such  authority  can 
be  deduced  from  the  common  law,  then  it  ought  to  be  con- 
ferred by  legislation  ;  for  unless  it  exists  or  is  supplied,  it 
must  often  happen  in  the  future  that  inf ringers  will  profit  by 
their  infringements  far  more  than  inventors  can  profit  by  their 
inventions. 

§  421.  A  majority  of  the  States  have  abolished  all  common 
law  actions,  and  have  substituted  for  the  whole  of  them  a 
single  form  of  proceeding  which  they  call  a  civil  action. 
The  United  States  statutes  provide  that  "  The  practice, 
pleadings,  and  forms  and  modes  of  proceeding  in  civil  causes, 
other  than  equity  and  admiralty  causes,  in  the  circuit  and  dis- 
trict courts,  shall  conform,  as  near  as  may  be,  to  the  practice, 
pleadings,  and  forms  and  modes  of  proceeding  existing  at  the 
time  in  like  causes  in  the  courts  of  record  of  the  State  within 
which  such  circuit  or  district  courts  are  held,  any  rule  of  court 
to  the  contrary  notwithstanding,''*  and  that  "Damages  for 
the  infringement  of  any  patent  may  be  recovered  by  action 


1  Stevens  v.  Kansas  Pacific  Kail-  East  Tennessee,  "Virginia  &  Georgia 
way  Co.,  5  Dillon,  486,  1879  ;  Nevins  Eailroad  Co.  2  Bann.  &  Ard.  537, 
v.  Johnson,  3  Blatch.  80,  1853  ;  1877  ;  Vaughan  v.  Central  Pacific 
Sickles  v.  Mfg.  Co.  1  Fisher,  222,1856;  Kailroad  Co.  3  Bann.  &  Ard.  28, 
Jenkins  v.  Greenwald,  2  Fisher,  41,  1877  ;  Sayles  v.  Dubuque  &  Sioux 
1857  ;  Imlay  v.  Kailroad  Co.  4  Blatch.  City  Railroad  Co.  3  Bann.  &  Ard.  219, 
228,  1858  ;  Perry  v.  Coming,  6  Blatch.  1878  ;  Gordon  v.  Anthony,  16  Blatch. 
134,  1868  ;  Howes  v.  Nute,  4  Clif.  174,  234,  1879;  Hendrie  v.  Sayles,  98 
1870  ;  Cowing  v.  Rumsey,  8  Blatch.  U.  S.  546, 1879  ;  Bignall  v.  Harvey,  18 
36,  1870  ;  Packet  Co.  v.  Sickles,  19  Blatch.  353,  1880  ;  Atwood  v.  Port- 
Wallace,  611,  1873  ;  Smith  v.  Baker's  land  Co.  10  Fed.  Rep.  283,  1880; 
Administrators,  1  Bann.  <fe  Ard.  117,  Stevens  v.  Baltimore  «t  Ohio  Rail- 
1874  ;  Wetherill  v.  Zinc  Co.  1  Bann.  road  Co.  6  Fed.  Rep.  283,  1881. 
<fe  Ard.  485,  1874  ;  Burdell  v.  Denig,  5  Root  v.  Railway  Co.  105  U.  8. 
92  U.  S.  720,  1875  ;  Birdsall  v.  Coo-  189,  1881. 
lidge,  93  U.  S.  68,  1876  ;  Vaughan  v.  3  Revised  Statutes,  Section  914. 


312  ACTIONS    AT   LAW.  [CHAP.  XVIH. 

on  the  case."  '  Both  these  apparently  inconsistent  provisions 
are  contained  in  the  same  enactment.  They  must  therefore 
be  construed  together  ;  and  effect  must  be  given  to  both. 
When  so  construed,  it  will  be  seen  that  Section  914  does  not 
oust  nor  affect  the  operation  of  the  other.  Both  can  harmoni- 
ously stand,  when  Section  914  is  held  to  be  a  general  provision 
covering  no  case  which  is  specially  provided  for  ;  or  when  it 
is  held  to  cover  no  cause  save  such  as  are  "  like"  the  causes 
litigated  in  State  courts.  To  hold  that  Section  914  is  the  one 
which  prescribes  what  forms  of  action  are  to  be  used  in  patent 
causes  would  involve  a  decision  that  there  are  "  like  causes" 
in  State  courts,  and  a  further  decision  that  the  enactment 
quoted  from  4919  is  wholly  nugatory.  The  conclusion  ap- 
pears to  be,  that  the  proper  action  at  law  by  means  of  which  to 
recover  damages  for  infringements  of  patent  is  the  same 
throughout  the  United  States  and  is  an  action  of  trespass  on 
the  case. 

§  422.  The  declaration  in  an  action  of  trespass  on  the  case, 
for  an  infringement  of  a  patent,  ought  to  be  in  proper  com- 
mon law  form,  as  distinguished  from  the  complaints  and  peti- 
tions prescribed  for  other  actions  by  the  codes  of  sundry  of 
the  States.  The  proper  parts  of  such  a  declaration  are  the 
following  :  1.  The  title  of  the  court.  2.  The  title  of  the 
term.  3.  The  venue.  4.  The  commencement.  5.  The 
statement  of  the  right  of  action.  6.  The  conclusion. 

The  true  title  of  the  United  States  Circuit  Court  established 
in  Connecticut  is  "  Circuit  Court  of  the  United  States,  for  the 
District  of  Connecticut,"  and  the  title  of  the  circuit  court 
which  is  established  in  any  other  district  is  the  same,  except 
as  to  the  name  of  the  district.8 

The  proper  term  of  the  court  in  which  to  entitle  the  decla- 
ration is  the  term  at  which  the  appearance  of  the  defendant 
is  due."  It  is  unnecessary  to  entitle  a  declaration  in  the 
name  of  the  case  in  which  it  is  filed  ;  though  it  is  convenient 
to  indorse  that  name  on  the  back  of  the  declaration,  for  the 

»  Revised  Statutes,  Section  4919.  3 1  Chitty  on  Pleading,  15  Ameri- 

J  Revised  Statutes,  Section  608.  can  Edition,  p.  263. 


CHAP.  XVin.]  ACTIONS    AT    LAW.  313 

purpose  of  enabling  the  document  to  be  readily  found  in  a 
file. 

The  venue  should  be  laid  in  the  district  where  the  action  is 
commenced,  regardless  of  the  district  or  districts  wherein  the 
infringement  was*  committed. '  An  infringement  suit,  being 
based  on  a  transitory  cause  of  action,  the  place  laid  in  the 
declaration  draws  to  itself  the  trial  of  all  questions  of  infringe- 
ment, wherever  committed  ;  except  in  the  single  case  where 
the  United  States  statutes  otherwise  provide." 

The  commencement  contains  a  statement  of  the  names  of 
the  parties  to  the  action,  and  of  the  capacity  in  which  they 
respectively  sue  or  are  sued,  if  it  is  other  than  a  natural  per- 
sonal capacity.  Though  it  is  probably  unnecessary,  it  is  un- 
doubtedly prudent  to  state  the  nation  of  which  the  parties  are 
respectively  citizens,  and  if  that  nation  is  the  United  States, 
to  allege  also  the  particular  State  of  which  the  parties  are  citi- 
zens respectively.  Where  either  party  is  a  corporation,  that 
fact  must  be  stated,  and  the  name  of  the  State  or  other  sover- 
eignty wherein  it  was  created  and  exists  should  also  be  alleged. 
The  commencement  properly  closes  with  a  brief  recital  that 
the  form  of  action  is  that  of  trespass  on  the  case. 

§  423.  The  statement  of  the  right  of  action  should  contain 
the  name  and  residence  of  the  inventor,  in  order  to  identify 
him,  and  to  enable  the  defendant  to  make  inquiries  into  the 
history  of  the  alleged  invention.  If  that  name  or  that  resi- 
dence were  concealed  from  the  defendant,  he  might  thereby 
be  deprived  of  the  means  of  learning  of  several  perfect  de- 
fences. As  the  statutes  stand  at  present,  there  is  no  necessity 
for  stating  the  citizenship  of  the  inventor  in  any  declaration, 
unless  the  inventor  is  also  a  party  to  the  action.  Such  a 
necessity  will  however  arise  whenever  Congress  discriminates 
between  citizens  of  the  United  States  and  citizens  of  other 
countries,  in  respect  of  the  terms  upon  which  it  may  authorize 
patents  to  be  granted. 

§  424.  The  novelty  and  the  utility  of  the  invention  must  be 

1  McKenna  v.  Fisk,  1  Howard,  248,  *  Revised   Statutes,   Section   657  ; 

1843.  Section  390  of  this  book. 


314:  ACTIONS    AT    LAW.  [CHAP.   XVIII. 

put  in  issue  by  proper  averments  in  the  declaration  ;  but  it  is 
not  necessary  to  state  the  particular  time  at  which  the  inven- 
tion was  made,  so  that  it  appears  to  have  been  made  before 
the  application  for  the  patent  was  filed.1  The  circumstance 
that  letters  patent  are  themselves  prima  facie  evidence  of 
novelty  and  utility,  does  not  render  unnecessary  a  proper 
allegation  of  those  facts  in  the  declaration.  Evidence  cannot 
take  the  place  of  pleading,  and  proper  pleading  is  necessary 
to  make  any  kind  of  evidence  admissible  in  support  of  the 
right  of  a  patentee  to  recover  for  an  infringement  of  his 
patent. 

§  425.  The  statement  of  the  right  of  action  must  also  aver 
that  the  invention  was  not  in  public  use  or  on  sale  for  more 
than  two  years  before  the  inventor's  application  for  the 
patent  ;  because  that  fact  is  one  of  those  which  are  necessary 
to  give  the  Commissioner  of  Patents  jurisdiction  to  grant  such 
a  document.1  It  is  a  fact  which  is  of  the  essence  of  the  right 
of  action,  and  it  must  therefore  be  stated  in  the  declaration.1 

But  the  rule  of  this  section  is  qualified  by  another,  in  every 
case  where  public  use  or  sale  of  an  invention,  more  than  two 
years  before  an  application  for  a  patent,  must  have  occurred 
with  the  consent  of  the  inventor,  in  order  to  invalidate  the 
patent.4  In  every  such  case  it  is  necessary  and  is  sufficient 
to  allege  in  the  declaration  that  the  invention  was  not  in  pub- 
lic use  or  on  sale  with  the  consent  or  allowance  of  the  inventor, 
for  more  than  two  years  before  his  application  for  a  patent 
therefor. 

§  426.  If  the  patentee  is  neither  a  party  to  the  action,  nor 
the  inventor  of  the  thing  or  process  covered  by  the  patent,  it 
is  natural  and  proper  to  separately  state  his  name  in  order  to 
fully  and  surely  identify  the  patent.  It  is  well  also  to  state 
his  residence  and  his  citizenship,  though  there  is  at  present  no 
requirement  of  law  on  either  of  those  points. 

§  427.  It  is  not  necessary  to  state  in  a  declaration  the  partic- 

1  Wilder  v.  McCormick,  2  Blatch.  *  Gray  v.  James,  1  Peters'  Circuit 

31,  1846.  Court  Eeporta,  482.  1817. 

1  Revised  Statutes,  Section  4886.  4  Section  102  of  this  book. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  315 

ulars  of  the  application  for  the  letters  patent,  nor  the  partic- 
ulars of  the  proceedings  of  the  Patent  Office  in  considering 
that  application,  because  the  courts  will  presume  that  every- 
thing was  rightly  done  which  the  law  required  to  be  done  in 
order  to  authorize  the  Commissioner  to  issue  the  patent.1  It 
is  customary  and  proper  to  say  in  a  declaration  that  the  invent- 
or made  due  application  for  letters  patent,  but  not  even  that 
general  allegation  appears  to  be  required.8 

§  428.  The  declaration  may  describe  the  patent  in  the  lan- 
guage of  the  grant,  and  it  is  not  necessary  to  set  out  the  speci- 
fication either  verbatim  or  substantially;3  though  it  is  not 
improper,  except  in  point  of  prolixity,  to  incorporate  the  whole 
of  the  patent  and  specification  into  the  declaration.4 

The  declaration  must  state  that  the  letters  patent  were  issued 
in  the  name  of  the  United  States  of  America,  under  the  seal 
of  the  Patent  Office,  and  were  signed  by  the  Secretary  of  the 
Interior  and  countersigned  by  the  Commissioner  of  Patents, 
and  that  they  were  delivered  to  the  patentee.5  Inasmuch  as 
patents  are  granted  for  various  spaces  of  time,  it  is  necessary 
to  state  the  particular  terms  for  which  the  letters  patent  in  suit 
were  issued.  It  is  necessary  also  to  plead  the  legal  effect  of 
the  patent,  by  saying  that  it  did  grant  to  the  patentee,  his  heirs 
or  assigns,  the  exclusive  right  to  make,  use,  and  vend  the  in- 
vention covered  thereby,  throughout  the  United  States  and 
the  Territories  thereof.8 

§  429.  Where  the  patent  upon  which  the  action  is  based,  is 
a  reissue,  the  original  letters  patent  should  be  set  forth  pre- 
cisely as  though  no  surrender  and  reissue  had  occurred  ;  and 
in  addition  thereto,  it  is  necessary  to  state  the  particular  kind 
of  defect  which  made  the  original  a  proper  subject  of  a  reis- 
sue ;  and  to  state  also  that  such  defect  arose  from  inadver- 
tence, accident  or  mistake,  as  the  case  may  be,  and  without 

1  Cutting  v.  Myers,  4  Washington,          4  "Wilder  v.  McCormick,  2  Blatch. 

221,  1818.  35,  1846. 

*  Wilder  v.  McCormick,  2  Blatch.          8  Revised  Statutes,   Section  4883. 

31,  1846.  Cutting  v.  Myers,  4  Washington,  222, 

3  Cutting  v.  Myers,  4  Washington,  1818. 
223,  1818.  •  Revised  Statutes,  Section  4884. 


316  ACTIONS    AT   LAW.  [CHAP.  XVIII. 

any  fraudulent  or  deceptive  intention  ;  and  to  state  that  the 
original  patent  was  surrendered,  and  who  surrendered  it ;  and 
to  state  that  the  Commissioner  of  Patents  caused  a  new  patent 
to  be  issued  for  the  same  invention  ;  and  to  state  finally  the 
name  of  the  person  to  whom  such  new  patent  was  granted. 
These  particulars  lie  at  the  foundation  of  the  right  of  the  grantee 
of  a  reissue  patent  to  receive  such  a  grant  ;  and  although  the 
reissue  is  prima  facie  evidence  that  the  truth  on  all  these 
points  is  favorable  to  the  validity  of  the  patent,  it  is  none  the 
less  necessary  to  put  those  facts  in  issue  by  proper  pleading. 
The  statements  of  this  section  are  made  subject  to  the  condi- 
tion that,  if  the  Supreme  Court  shall  decide  any  of  these 
points  of  fact  to  be  conclusively  settled  by  the  decision  of  the 
Commissioner  in  granting  a  reissue,  it  will  then  be  unnecessary 
to  state  such  fact  or  facts  in  a  declaration. 

§  430.  Where  a  disclaimer  has  been  filed,  that  fact  ought  to 
be  stated  in  the  declaration  and  its  legal  effect  ought  to  be  in- 
dicated, because  disclaimers  constitute  amendments  of  original 
patents,  and  operate  to  vary  their  scope.1  In  such  a  case 
also,  the  declaration  ought  to  state  that  the  disclaimer  was  filed 
without  unreasonable  delay,  because  that  fact  is  necessary 
to  the  right  of  a  patentee  to  maintain  a  suit  on  a  patent  which 
required  a  disclaimer." 

§  431.  Where  the  patent  in  suit  was  extended  by  the  Com- 
missioner of  Patents,  and  where  the  action  is  based  partly  or 
wholly  on  its  extended  term,  the  declaration  must  state  that 
the  extension  was  made  in  due  form  of  law,  and  must  show 
that  it  was  made  before  the  expiration  of  the  original  term. 
It  ought  to  state  also  that  the  extension  was  for  the  term  of 
seven  years  from  the  expiration  of  the  first  term  ;  but  as  that 
is  true  of  all  such  extensions,  it  is  possible  that  the  omission 
would  be  an  immaterial  one. 

Where  the  patent  has  been  extended  by  a  special  Act  of 
Congress,  and  where  the  suit  is  partly  or  wholly  based  on  such 
extension,  the  declaration  must  state  the  legal  effect  of  the  Act 
of  extension,  and  it  must  especially  show  the  particular  space 
of  time  covered  thereby. 

1  Revised  Statutes,  Section  4917.        •  Bevised  Statutes,  Section  4922. 


CHAP.   XVin.]  ACTIONS   AT   LAW.  317 

§  432.  Where  the  plaintiff  is  an  assignee  or  grantee  of  the 
patentee,  it  is  safer  to  set  forth  all  the  mesne  assignments  or 
grants  down  to  him,  than  merely  to  state  that  the  exclusive 
right  which  was  infringed  by  the  defendant,  came  to  the  plain- 
tiff by  assignment  or  by  grant.  This  point  of  pleading  seems 
deducible  by  analogy  from  the  rule  relevant  to  declaring  on  an 
assigned  term  for  years  of  real  estate. '  Title  papers  should, 
however,  be  set  forth  by  their  legal  effect,  rather  than  incor- 
porated bodily  into  the  declaration. 

§  433.  No  profert  nee,d  be  made  in  any  declaration,  of  any 
letters  patent,  disclaimer,  reissue,  or  certificate  of  extension, 
because  all  such  documents  are  matters  of  record  in  the  Patent 
Office.4  Nor  is  any  profert  necessary  of  any  assignment  or 
grant  of  any  interest  under  letters  patent,  because,  although 
those  instruments  are  sometimes  under  seal,  they  are  not  re- 
quired to  be  so,3  and  therefore  do  not  fall  within  the  defini- 
tion of  a  deed.4  If,  however,  the  title  of  the  plaintiff  is  founded 
upon  letters  testamentary  or  letters  of  administration,  he  must 
make  profert  of  the  same,  because  they  constitute  exceptions 
to  the  general  rule  that  profert  is  necessary  only  of  deeds.* 
If  profert  is  made  of  any  document  of  which  it  is  not  necessary, 
it  will  be  treated  as  mere  surplusage,  and  will  not  entitle  the 
defendant  to  oyer.' 

§  434.  Infringement  may  be  stated  in  a  declaration  in  gen- 
eral terms.  Such  a  statement  is  sufficiently  specific  if  it 
plainly  alleges  that  the  defendant,  without  the  leave  or  license 
of  the  owner  of  the  patent,  did  use,  or  that  he  did  make,  or 
that  he  did  sell,  a  specimen  or  specimens  of  the  thing  or  proc- 
ess covered  by  the  patent,  within  the  territory  covered  by  the 
plaintiff's  title  thereto,  and  within  the  time  during  which  the 
plaintiff  held  the  title  within  that  territory,  and  contrary  to 
the  form  of  the  Act  of  Congress  in  such  cases  made  and 
provided,  and  against  the  privileges  granted  by  the  patent,7 

1  1  Chitty  on  Pleading,  368.  5  Gould's  Pleading,  Ch.  VHI.  Sec. 

8 1  Chitty  on  Pleading,  366  ;  Smith  43. 

v.  Ely,  5  McLean,  90,  1849.  6  1  Chitty  on  Pleading,  366. 

3  Revised  Statutes,  Section  4898.  1  Cutting  v.  Myers,  4  Washington, 

4  Stephen    on     Pleading,     Ninth  223,  1818. 
American  Edition,  437. 


318  ACTIONS    AT   LAW.  [CHAP.   XVITI. 

This  last  statement,  indeed,  seems  hardly  necessary,  for  it  is 
but  a  conclusion  of  law  from  the  facts  stated  ;  and  the  allega- 
tion that  the  infringement  was  contrary  to  the  statute  is  un- 
necessary, unless  the  plaintiff  seeks  to  recover  exemplary  as  well 
as  actual  damages. '  Nor  is  it  generally  necessary  in  a  decla- 
ration to  negative  the  hypothesis  of  a  license  ;  for  licenses, 
where  they  exist,  may  more  properly  be  first  mentioned  in  the 
pleadings  of  the  defendant.4  But  where  the  declaration 
shows  that  strangers  to  the  suit  have  an  exclusive  United  States 
license,  it  must  also  show  that  the  .defendant  is  not  lawfully 
operating  thereunder.3  While  an  allegation  of  either  iriak- 
ing,  using,  or  selling  will  be  sufficient  in  a  declaration  to  show 
a  cause  of  action,  no  allegation  of  any  one  of  these  kinds  of 
infringement  will  support  evidence  of  either  of  the  others. 
A  declaration  ought  therefore  to  allege  as  many  of  them  as 
the  plaintiff  has  any  expectation  of  being  able  to  prove. 

§  435.  The  time  of  the  infringement  is  properly  stated  by 
alleging  that  it  occurred  on  a  specified  day,  and  on  divers 
other  days  between  that  day  and  some  later  specified  date  ; 
and  no  plaintiff  will  be  permitted  to  prove  infringement  outside 
of  the  space  of  time  which  he  specified  in  his  declaration.4 
Repeated  infringements  may  be  sued  for  in  one  action  ;  *  but 
all  the  infringements  complained  of  in  one  declaration,  must 
have  been  committed  after  the  plaintiff  obtained  title  to  the 
patent,  and  before  the  beginning  of  the  action.  Where  the 
plaintiff  is  an  assignee,  and  where  he  not  only  has  rights  of 
action  against  the  defendant,  for  infringements  committed 
after  the  date  of  his  assignment,  but  also  has  purchased  rights 
of  action  against  the  same  party,  for  infringements  committed 
before  such  purchase,  he  must,  if  he  sues  at  law,  bring  a  sepa- 
rate action  for  the  latter  causes,  and  must  bring  that  action  in 
the  name  of  the  person  who  owned  the  patent  at  the  time  they 
accrued. 

'Parker  v.  Haworth,  4  McLean,  » Still  v.   Beading,   20  Off.    Gaz. 

373,  1848.  1026,  1881. 

s  Gelpcke  v.  Dubuqne,  1  Wallace,  4  Eastman  v.  Bodfish,  1  Story,  530, 

222,   1863  ;  Catlin  v.  Insurance  Co.  1841. 

1   Sumner,   440,    1833  ;    Fischer  v.  6  Wilder  u.  McCormick,  2  Blatch. 

Hayes,  6  Fed.  Kep.  79,  1881.  32,  1846. 


CHAP.    XVIII.]  ACTIONS   AT   LAW.  319 

§  436.  The  damages  incurred  by  the  plaintiff  on  account  of 
a  defendant's  infringement  must  be  stated  specially,  because 
no  particular  damage  necessarily  arises  from  infringements  of 
patents,  and  therefore  none  is  implied  by  the  law.1  The 
special  damages  to  be  alleged  in  any  particular  case  depend 
upon  the  circumstances  of  that  case:  depend  upon  the  par- 
ticular criterion  of  damages  upon  which  the  plaintiff  relies. 
The  various  measures  of  damages  in  patent  cases  are  stated 
and  explained  in  the  nineteenth  chapter  of  this  book.  One  or 
more  of  them  will  be  found  to  be  applicable  to  every  case 
which  is  likely  to  arise.  From  among  them,  the  pleader  may 
select  those  which  he  expects  to  be  able  to  prove  to  be  perti- 
nent, and  may  then  draw  his  special  statement  of  damages  ac- 
cordingly. Such  a  special  statement  is  required  by  the  sub- 
stantial principles  of  pleading,  as  well  as  by  its  technical  rules. 
"Without  it,  the  defendant  would  not  be  apprised  of  all  the  is- 
sues of  the  case.  He  would  not  know,  till  the  day  of  trial, 
whether  the  plaintiff  would  prove  an  established  royalty,  or 
prove  interference  with  his  business,  or  prove  what  would  be 
a  reasonable  royalty,  as  the  criterion  of  his  damages.  The  de- 
fendant would  therefore  have  to  go  to  court  provided  with  wit- 
ness on  all  these  points,  or  would  have  to  trust  his  sagacity,  and 
guess  which  of  these  points  he  would  be  called  upon  to  meet. 
It  was  to  prevent  such  inconveniences  that  written  pleadings 
were  originally  designed  ;  and  for  the  same  purpose  among 
others,  they  are  still  retained  as  a  part  of  actions  in  courts. 

§  437.  The  conclusion  of  a  proper  declaration  in  a  patent 
case  alleges  that,  by  force  of  the  statutes  of  the  United  States, 
a  right  of  action  has  accrued  to  the  plaintiff,  to  recover  the 
actual  damages  which  the  declaration  specifies,  and  such  ad- 
ditional amount,  not  exceeding  in  the  whole  three  times  the 
amount  of  such  actual  damages,  as  the  court  may  see  fit  to  ad- 
judge and  order,  besides  costs.  The  conclusion  ends  with  the 
ancient  allegation  of  bringing  suit. 

§438.  A  declaration,  though  not  drawn  in  due  form,  is 
sufficient  for  practical  purposes,  if  it  contains  all  that  is  essen- 

1  1  Chitty  on  Pleading,  396. 


320  ACTIONS   AT    LAW.  [CHAP.   XVIII. 

tial  to  enable  the  plaintiff  to  give  evidence  of  his  right  and  of 
its  violation  by  the  defendant,  and  affords  to  the  defendant 
the  opportunity  of  interposing  every  defence  allowed  to  him 
by  law. '  Courts  do  not  encourage  merely  technical  objections 
to  pleadings,  and  even  on  special  demurrer  will  seek  to  sustain 
those  which,  though  not  technically  accurate,  are  substantially 
sufficient  for  the  real  purposes  of  pleading. 

At  this  point  the  attention  may  turn  from  the  first  pleading 
of  a  plaintiff  in  a  patent  action,  and  may  engage  itself  for  a 
while  with  pleadings  which  are  appropriate  to  defendants  in 
such  cases. 

§  439.  Dilatory  pleas  in  patent  actions  are  not  materially 
different  in  their  nature  and  operation  from  corresponding 
pleas  in  other  common  law  cases.  It  is  therefore  unnecessary 
to  treat  those  preliminary  defences  in  this  book.  Recourse 
may  be  had  to  the  standard  works  on  common  law  pleading, 
for  whatever  information  the  patent  pleader  may  require  upon 
the  subject. 

§  440.  The  defences,  which  are  pleadable  in  bar  to  an  action, 
are  very  numerous  in  the  patent  law,  and  most  of  them  are 
peculiar  to  that  branch  of  jurisprudence.  Where  the  facts  ap- 
pear to  sustain  him  in  so  doing  a  defendant  may  plead  :  1. 
That  the  matter  covered  by  the  original  letters  patent,  was  not 
a  statutory  subject  of  a  patent  :  or  2.  That  it  was  not  an  in- 
vention :  or  3.  That  it  was  not  novel  at  the  time  of  its  alleged 
invention  :  or  4.  That  it  was  not  useful  at  that  or  any  other 
time  :  or  5.  That  the  inventor  actually  abandoned  the  inven- 
tion, before  any  application  was  made  for  a  patent  therefor  :  or 
6.  That  he  constructively  abandoned  it,  by  allowing  it  to  be  in 
public  use  or  on  sale  more  than  two  years  before  such  applica- 
tion :  or  7.  That  the  invention  claimed  in  the  original  patent 
is  substantially  different  from  any  indicated,  suggested,  or  de- 
scribed in  the  original  application  therefor  :  or  8.  That  the 
patentee  surreptitiously  or  unjustly  obtained  the  patent  for 
that  which  was  in  fact  the  invention  of  another,  who  was  using 
reasonable  diligence  in  adapting  and  perfecting  the  same  :  or 

1  Wilder  v.  McCormick,  2  Blatch.  37,  1846. 


CHAP.   XVIII.]  ACTIONS    AT   LAW. 

9.  That  the  invention  was  made  by  another  jointly  with  the 
sole  applicant :  or  10.  That  it  was  made  by  one  only  of  two 
or  more  joint  applicants  :  or  11.  That  for  the  purpose  of  de- 
ceiving the  "public  the  description  and  specification  filed  in  the 
Patent  Office  was  made  to  cover  less  than  the  whole  truth 
relevant  to  the  invention,  or  was  made  to  fcover  more  than  was 
necessary  to  produce  the  desired  effect :  or  12.  That  the  de- 
scription of  the  invention  in  the  specification,  is  not  in  such 
full,  clear,  concise,  and  exact  terms  as  to  enable  any  person 
skilled  in  the  art  or  science  to  which  it  appertains,  or  with 
which  it  is  most  nearly  connected,  to  make,  construct,  com- 
pound, and  use  the  same  :  or  13.  That  the  claims  of  the  patent 
are  not  distinct  :  or  14.  That  the  patentee  unreasonably  de- 
layed to  enter  a  needed  disclaimer  :  or  15.  That  the  original 
patent  was  surrendered  and  reissued  in  the  absence  of  every 
statutory  foundation  therefor  :  or  16.  That  the  claims  of  the 
reissue  patent  in  suit  are  broader  than  those  of  the  original, 
and  that  the  reissue  was  not  applied  for  till  a  long  time  had 
elapsed  after  the  original  was  granted  :  or  17.  That  the  reissue 
patent  in  suit  covers  a  different  invention  from  any  suggested, 
indicated,  or  described  in  the  original  specification  or  draw- 
ings :  or  18.  That  tlje  patent  was  extended  without  any  statu- 
tory application  therefor  :  or  19.  That  the  patent  was  repealed: 
or  20.  That  the  patent  legally  expired  before  the  alleged  in- 
fringement began,  or,  before  it  ended  :  21.  That  the  patentee 
made  or  sold  specimens  of  the  invention  covered  by  his  patent, 
without  marking  them  "patented,"  and  without  notifying  the 
defendant  of  his  infringement  :  or  22.  That  the  plaintiff  has 
no  title  to  the  patent,  or  no  such  title  as  can  enable  him  to 
maintain  the  action  :  or  23.  That  the  defendant  has  a  license, 
which  authorized  part  or  all  of  the  doings  which  constitute  the 
alleged  infringement  :  or  24.  That  the  defendant  has  a  release, 
discharging  him  from  liability  on  account  of  part  or  all  of  the 
alleged  infringement  :  or  25.  That  the  defendant  is  not  guilty 
of  any  infringement  of  the  patent  upon  which  he  is  sued  :  or 
26.  That  the  plaintiff  is  estopped  from  enforcing  his  right  of 
action  :  or  27.  That  the  cause  of  action  sued  upon  is  partly  or 
wholly  barred  by  some  statute  of  limitation. 


322  ACTIONS    AT    LAW.  [CHAP.   XVIII. 

§  441.  The  first  fourteen  of  these  defences  assail  the  validity 
of  original  patents  ;  and  either  of  them,  if  successfully  main- 
tained, will  defeat  any  such. patent,  and  therefore  defeat  any 
action  based  thereon.  All  of  the  fourteen  are  also  applicable 
to  actions  based  upon  reissue  patents,  for  though  a  defective 
or  insufficient  specification,  or  a  defective  or  insufficient  claim, 
or  an  excessive  claim,  can  be  cured  by  surrender  and  reissue  ; 
those  faults  are  sometimes  retained  and  sometimes  introduced 
in  reissues.1 

The  fifteenth,  sixteenth,  and  seventeenth  of  these  defences 
assail  reissues  as  reissues.  To  what  extent  those  defences,  if 
successful,  will  affect  the  patent,  or  the  action,  are  points 
which  are  explained  in  the  chapter  on  reissues.2 

The  eighteenth  defence  applies  only  to  the  extended  terms 
of  such  patents  as  were  extended  by  the  Commissioner  of  Pat- 
ents. If  maintained  with  success  on  the  trial  of  an  action  for 
infringement  of  such  an  extended  term,  such  a  defence  would 
be  completely  efficacious  ;  because  the  Commissioner  never  had 
jurisdiction  to  extend  any  patent  without  such  an  application 
therefor  as  the  statutes  required. 

The  nineteenth  defence,  when  true,  will  certainly  be  a  full 
one,  to  any  action  based  on  alleged  infringements  which  were 
committed  after  the  repeal  of  the  patent.  Whether  it  will  be 
a  defence  to  any  infringement  committed  before  that  time, 
will  depend  upon  whether  the  patent  is  repealed  db  initio,  or 
only  infuturum.  As  no  United  States  patent  for  an  invention 
was  ever  yet  reported  to  have  been  repealed,  no  further  infor- 
mation on  this  point  can  at  present  be  conveyed. 

The  twentieth  defence  will  be  available  where  the  defendant 
can  prove  that  the  invention  was  patented  with  the  knowledge 
and  consent  of  the  inventor  in  some  foreign  country  before  it 
was  patented  in  the  United  States,  and  that  such  foreign 
patent  expired  before  the  United  States  patent  purported  to 
terminate.  This  defence,  if  successful,  will  not  affect  the 
validity  of  the  patent.  It  will  merely  limit  the  time  wherein 
it  is  capable  of  being  infringed.1 

1  Kevised  Statutes,  Section  4916.  3  Section  163  of  this  book. 

*  Sections  225  and  249  of  this  book. 


CHAP.   XVIII.]  ACTIONS    AT    LAW.  323 

The  twenty-first  defence,  if  successful,  will  bar  the  action, 
but  it  will  not  affect  the  patent.  Any  oral  or  written  notice  of 
infringement,  if  given  to  the  defendant  without  stopping  his  in- 
fringement, will  have  some  effect  upon  this  defence. '  Whether 
it  will  entirely  oust  the  defence,  or  will  oust  it  only  as  to 
subsequent  infringements,  is  a  point  which  appears  not  to 
have  been  much  considered.  The  decision  in  the  case  last 
cited  was  based  on  the  latter  opinion,  though  an  argument 
could  be  deduced  from  the  statute  which  would  favor  the 
former.11 

The  last  six  of  the  twenty-seven  defences  are  all  without 
relevancy  to  the  validity  of  the  patent.  Either  of  them  may 
be  partly  or  wholly  successful,  according  to  the  circumstances 
of  each  action,  regardless  of  the  success  or  want  of  success 
which  may  attend  the  other  twenty-one. 

§  442.  The  ancient  rules  of  common  law  pleading  would 
require  a  special  plea  for  either  of  the  twenty-seven  defences, 
which  are  enumerated  in  Section  440,  save  only  the  defense  of 
non-infringement,  and  sometimes  that  of  want  of  title.3  But 
a  loose  and  unscientific  relaxation  of  that  part  of  those  rules, 
crept  at  one  time  into  practical  pleadings,  both  in  England  and 
America.  The  abuse  was  reformed  in  England  in  the  fourth 
3rear  of  William  the  Fourth  ;  *  but  in  the  United  States  it  has 
continued,  except  so  far  as  it  has  been  limited  or  enlarged 
by  legislation  in  particular  States.  But  there  was  never 
any  principle  which  guided  this  departure  from  the  ancient 
law,  and  therefore  no  foundation  for  any  science  of  the  sub- 
ject. Where  an  authoritative  precedent  can  be  found  for  a  par- 
ticular relaxation,  that  particular  relaxation  must  be  regarded. 
In  the  absence  of  such  a  precedent,  the  safe  and  proper  course 
is  to  conform  to  the  ancient  common  law  rules,  unless  the 
pleader  is  willing  to  risk  his  defence  upon  the  theory  that 
State  statutes  relevant  to  pleadings  are  binding  on  Federal 
courts  when  trying  patent  actions  of  trespass  on  the  case.  The 


1  New  York  Pharmicol  Association          3  Stephen  on  Pleading,  160. 
v.  Tilden,  14  Fed.  Rep.  740,  1882.  *  Stephen  on  Pleading,  158. 

*  Revited  Statutes,  Section  4900. 


324  ACTIONS    AT    LAW.  [CHAP.   XVHI. 

text  writer  believes  that  they  are  not  binding  under  such  cir- 
cumstances, because  actions  of  trespass  on  the  case  were  first 
prescribed  by  Congress  for  patent  suits  in  1790,1  and  be- 
cause the  law  has  never  since  been  changed  in  that  particular, 
and  because,  therefore,  there  seems  to  be  no  authority  for 
holding  that  such  an  action  under  the  Revised  Statutes,  is  a 
different  proceeding  from  what  it  was  under  the  earliest  of  the 
statutes  at  large. 

§  443.  The  patent  statute  provides  that  five  of  the  twenty- 
seven  defences  may  be  made  under  the  general  issue,  accom- 
panied with  a  certain  statutory  notice  of  special  matter.1 
Those  are  the  defences  which,  in  Section  440  of  this  book,  are 
numbered  three,  five,  six,  eight,  and  eleven,  respectively.  In 
the  statute,  they  are  mentioned  in  a  different  order  ;  and  in- 
deed the  fifth  and  sixth  are  there  grouped  together,  and  the 
third  is  there  separated  into  two  parts.  The  reasons  for  chang- 
ing the  classification  in  those  particulars  are  probably  obvious 
to  the  reader.  The  fifth  and  sixth  defences  are  entirely  dis- 
tinct from  each  other  ;  while  the  third  is  sustained  by  evidence 
of  anticipating  matter,  whether  that  matter  is  a  prior  patent 
or  printed  publication  as  contemplated  by  one  division  of  the 
statute,  or  is  a  prior  knowledge  or  use  as  contemplated  by  an- 
other. Either  of  these  five  defences  may  also  be  made  under 
a  special  plea,  instead  of  under  the  general  issue  accompanied 
by  notice,  if  the  defendant  so  determines.3  But  if  any  defend- 
ant uses  both  these  forms  of  pleading  for  any  one  defence, 
the  court  will  on  motion  call  upon  him  to  select  the  one  which 
lie  prefers,  and  to  abandon  the  other.4 

§  444.  Notices  of  special  matter  must  be  in  writing,  and 
must  be  served  on  the  defendant  or  his  attorney  at  least  thirty 
days  before  the  trial  of  the  case.6  No  such  notice  requires 
any  order  of  court  as  a  prerequisite  thereto  ;  and  depositions 
taken  before  the  service  of  such  a  notice,  are  as  admissible 

1  1  Statutes  at  Large,  Ch.  7,  Sec.  4,  218,  1832  ;  Day  v.  Car-Spring  Co.,  3 

p.  111.  Blatch.  181,  1854. 

*  Revised  Statutes,  Section  4920.  4  Bead  v.  Miller,  2  Bissell,  16, 1867. 

3  Evans  v.  Eaton,  3  Wheaton,  454,          *  Revised  Statutes,  Section  4920. 
1818  ;  Grant  v.  Raymond,  6  Peters, 


CHAP.  XVIII.]  ACTIONS    AT   LAW.  325 

under  it  as  if  taken  afterward.1  It  is  not  the  purpose  of  the 
statute  to  oblige  the  defendant  to  give  notice  of  anticipating 
matter  before  taking  testimony,  and  thus  to  enable  the  plaintiff 
to  tamper  with  the  witnesses.  Its  only  purpose  is  to  give  the 
plaintiff  thirty  days  before  the  trial,  in  which  to  secure  evi- 
dence to  contradict  the  testimony  of  the  defendant's  witnesses, 
in  case  the  latter  is  untrue. 

Notices  of  want  of  novelty  must  state  the  names  of  the  prior 
patentees,  and  the  dates  of  their  patents,  where  prior  patents 
are  relied  upon  ;  and  where  prior  knowledge  or  use  is  relied 
upon,  such  a  notice  must  state  the  names  and  residences  of  the 
persons  alleged  to  have  had  the  prior  knowledge  of  the  thing 
patented,  and  where  and  by  whom  it  was  used."  "Where 
prior  printed  publications  are  relied  upon  as  negativing  the 
novelty  of  the  patented  invention,  the  statute  does  not  say  how 
such  publications  are  to  be  identified  in  such  notices.  But  the 
Supreme  Court  has  decided  that  they  must  be  pointed  out  with 
sufficient  definiteness  to  relieve  the  plaintiff  from  making  an 
unnecessarily  laborious  search  therefor.3  In  the  case  just 
cited,  a  notice  was  held  to  be  insufficient,  which  stated  that  the 
patented  thing  was  described  in  a  certain  book  therein  men- 
tioned, but  did  not  state  in  what  part  of  that  book  it  was  s6 
described.  Notices  of  prior  knowledge  or  use  are  sufficiently 
specific,  when  they  specify  the  city  in  which  that  knowledge 
or  use  existed  or  occurred,  and  give  the  names  of  persons  who 
had  that  knowledge,  or  who  engaged  in  that  use,  and  state  in 
what  city  those  persons  reside.4  That  is  to  say  :  the  word 
"  where"  and  the  word  "  residence,"  as  those  words  are  used 
in  the  statute,  refer  to  cities,  villages,  or  towns,  as  the  case  may 
be,  and  do  not  refer  to  particular  houses,  factories  or  farms. 

The  names  of  witnesses  as  such  need  not  be  mentioned  in 
a  notice,  yet  it  is  often  necessary  to  use  as  witnesses,  persons 
who  are  named  in  the  notice  as  having  been  engaged  in  the 
prior  use  to  be  proved,  or  as  having  known  of  the  anticipating 

1  Teese  v.  Huntingdon,  23  Howard,  1852. 

2,  1859.  *  Wise  v.  Allis,   9  Wallace,    737, 

»  Revised  Statutes,  Section  4920.  1869. 
*  Silsby  v.  Foote,  14  Howard,  218, 


326  ACTIONS   AT   LAW.  [CHAP.   XVIH. 

process  or  thing.  Accordingly  where  a  notice  alleges  that 
A.  B.  used  an  anticipating  machine  iii  a  certain  city,  and  that 
C.  D.  had  knowledge  of  that  prior  use,  those  facts  may  both 
be  proved  by  E.  F.  without  mentioning  his  name  in  the 
notice.1  But  if  A.  B.  is  the  only  available  person  by  whom 
to  prove  his  prior  use,  or  if  his  testimony  on  that  point 
is  to  be  taken  together  with  that  of  others,  his  name  must 
still  be  mentioned  in  the  notice  :  mentioned  not  as  a  witness 
to  be  called  to  prove  a  fact,  but  as  the  person  who  transacted 
that  fact. 

Notices  need  not  state  the  particular  time  when  an  anticipat- 
ing printed  publication  was  published,  nor  when  an  anticipat- 
ing process  or  thing  was  known  or  used  ;  *  but  they  must 
state  the  dates  of  all  alleged  anticipating  patents.3  If  a  notice 
does  unnecessarily  state  a  particular  time,  that  statement  will 
be  regarded  as  harmless  surplusage,  and  a  variance  therefrom 
in  the  evidence,  will  not  render  the  latter  inadmissible/ 

§  445.  Where  any  defence  to  a  patent  action  can  be  based 
upon  a  fact  of  which  the  court  will  take  judicial  notice  without 
evidence,  that  defence  may  be  made  under  the  general  issue 
without  any  special  pleading.  This  point  has  perhaps  never 
been  adjudicated  in  an  action  at  law,  but  the  principle  upon 
which  it  rests  is  fully  established  in  actions  in  equity  ; *  and 
there  is  probably  no  reason  to  doubt  that  it  will  also  be  enforced 
on  the  law  side  of  the  Federal  courts.  In  the  case  last  cited, 
Justice  WOODS,  in  delivering  the  opinion  of  the  Supreme  Court, 
made  the  following  remark  :  "  Every  suitor  in  a  cause  founded 
on  letters  patent  should,  therefore,  understand  that  the  ques- 
tion whether  his  invention  is  patentable  or  not  is  always  open 
to  the  consideration  of  the  court,  whether  the  point  is  raised 
by  the  answer  or  not."  Now  it  has  been  shown  that  in  order 
to  be  "  patentable"  a  process  or  thing  must  have  four  charac- 

1  Planing-Machine    Co.  v.  Keith,  *  Phillips  v.  Page,  24  Howard,  164 

101  U.  8.  492,  1879  ;  Many  v.  Jagger,  1860. 

1  Blatch.  376,  1848.  » Brown  v.   Piper,   91   U.    S.   37, 

*  Phillips  v.  Page,  24  Howard,  164,  1875  ;  Slawson  v.  Kailroad  Co.  107 

1860.  U.  S.  649,  1882. 

3  Revised  Statutes,  Section  4920. 


CHAP.   XVin.]  ACTIONS    AT   LAW.  327 

teristics.  It  must  be  a  statutory  subject  of  a  patent.  It  must 
be  an  invention.  It  must  be  novel.  It  must  be  useful.' 
But  Justice  WOODS  used  the  word  "  patentable"  in  the  first 
and  second  of  these  senses  only.  It  was  long  ago  settled  that 
special  pleading,  or  a  statutory  notice,  is  necessary  to  the  de- 
fence of  want  of  novelty,2  and  alleged  want  of  utility  is  so 
plainly  a  question  of  fact,  depending  upon  evidence,  that 
plaintiffs  ought  not  to  be  liable  to  be  surprised  with  that 
defence,  on  the  trial  of  an  action  at  law.  But  Justice  WOODS' 
remark,  even  when  thus  limited,  requires  also  to  be  read  in 
the  light  of  the  case  then  at  bar.  In  that  case,  the  patents 
were  held  void  for  want  of  invention.  To  find  them  so,  the 
court  had  only  to  take  judicial  notice  that  windows  had  there- 
tofore been  placed  in  opposite  walls  of  rooms,  and  that  rays  of 
light  had  theretofore  been  reflected  through  apertures. 

§  446.  The  first  and  second  defences  are  those  which  come 
within  the  doctrines  of  the  last  section  relevant  to  judicial 
notice.  The  first  defence  is  applicable  only  when  a  "  princi- 
ple" has  been  patented,  as  for  example  by  the  eighth  claim  of 
Morse,3  or  by  the  anaesthesia  patent  of  Morton  and  Jack- 
son.* The  applicability  of  those  doctrines  to  that  defence  is 
perhaps  invariable.  But  where  a  patent  is  assailed  for  want  of 
invention  on  account  of  prior  facts  which  must  be  proved  by 
evidence  in  order  to  be  acted  upon  by  courts,  there  appears  to 
be  no  warrant  for  saying  that  the  second  defence  need  not  be 
pleaded.  Justice  requires  that  the  plaintiff  be  notified  before- 
hand of  such  a  defence,  as  truly  as  of  the  defence  of  want  of 
novelty  ;  for  it  may  equally  be  based  on  facts  outside  of  the 
patent,  and  outside  of  the  knowledge  of  the  inventor  and  of 
the  plaintiff. 

§  447.  The  third  defence  may  be  based  upon  a  special  plea, 
instead  of  on  the  general  issue  accompanied  by  notice,  and  when 
that  practice  is  adopted,  that  plea  is  the  only  notice  which  the 


1  Chs  I.  to  IV.  of  this  book.  112,  1853. 

*  Agawam  Co.  v.  Jordan,  7  Wallace,  4  Morton  v.  Infirmary.  5  Blatch. 
583,  1868.  116,  1862. 

*  O'Reilly  v.  Morse,   15   Howard, 


328  ACTIONS    AT   LAW.  [CHAP.   XVIII. 

plaintiff  can  claim.1  Federal  courts  of  equity,  without  any 
statute  prescribing  that  course,  have  always  followed  the  law 
relevant  to  notices  of  want  of  novelty  ;  and  have  uniformly 
rejected  evidence  on  that  point,  unless  the  defendant,  in  his 
answer,  gave  the  plaintiff  the  same  kind  and  degree  of  infor- 
mation thereof,  that  the  statute  calls  upon  a  defendant,  who 
pleads  the  general  issue  at  law,  to  give  in  his  notice.8  Courts 
of  law  will  probably  follow  this  salutary  example,  and  will  call 
upon  defendants  who  elect  to  plead  specially,  to  make  their 
special  pleas  as  full  in  this  respect,  as  the  statute  requires 
notices  to  be  when  the  general  issue  is  adopted.  So  also,  it 
has  been  held  that  special  pleas,  when  used  instead  of  notices, 
must  be  filed  at  least  thirty  days  before  the  term  of  trial,  or 
the  plaintiff  will  be  entitled  to  a  continuance.3  This  holding 
was  so  reasonable  that  it  can  be  supported  on  the  ground  that 
every  court  has  power  to  make  reasonable  rules  to  regulate  the 
time  of  tiling  pleas.4  A  special  plea  which  has  been  stricken 
out  by  order  of  court,  cannot  operate  as  a  notice  and  thus  fur- 
nish the  foundation  of  a  defence  which  requires  a  notice  in  the 
absence  of  a  special  plea.5 

§  448.  The  fourth  defence  is  not  among  those  which  can  be 
made  under  the  general  issue  accompanied  by  notice.  There 
is  probably  no  case  in  which  it  has  been  successfully  made  in 
equity,  without  being  set  up  in  the  answer  ;  or  at  law,  without 
being  set  up  in  a  special  plea.  In  the  absence  of  such  pre- 
cedents, it  would  be  unsafe  for  a  pleader  to  attempt  such  an 
innovation  on  the  rules  of  the  common  law. 

§  449.  The  fifth  and  sixth  defences  always  require  evidence 
outside  of  the  patent,  arid  outside  of  the  doctrines  of  judicial 
notice.  They  may  be  made  under  the  general  issue  accom- 
panied by  the  statutory  notice,9  or  under  a  special  plea,  but 


1  Evans  v.  Eaton,  3  Wheaton,  504,          *  Packet  Co.  v.  Sickles,  19  Wallace, 

1818.  611,  1873. 

1  Agawam  Co.  v.  Jordan,  7  Wallace,          6  Foote    v.   Silsby,   1   Blatch.   445, 

683,  1868.  1849. 

3  Phillips  v.  Comstock,  4  McLean,         *  Revised  Statutes,  Section  4920. 
625,  1849. 


CHAP.   XVIII.]  ACTIONS   AT   LAW.  329 

there  is  no  reason  to  suppose  that  they  can  lawfully  be  made 
under  the  general  issue  alone. 

§  450.  The  seventh  defence  is  not  based  on  any  express 
statute.  Its  foundation  is  the  general  spirit  of  the  patent 
laws,  re-enforced  by  the  dicta  of  the  Supreme  Court  in  the 
case  of  Railway  Co.  v.  Sayles.1  Evidence  to  support  it  must 
always  be  drawn  from  outside  of  the  patent,  and  must  be 
regularly  introduced  into  the  case.  This  defence  is  therefore 
to  be  made  by  a  special  plea,  when  it  is  made  at  all.  But  its 
applicability  will  always  be  very  infrequent. 

§  451.  The  eighth  defence  may  be  made  'either  by  the  gen- 
eral issue  accompanied  by  notice,2  or  by  a  special  plea.  It 
applies  to  cases  where  another  than  the  patentee  preceded  him 
in  the  first  conception  of  the  patented  thing,  but  did  not  pre- 
cede him  in  adapting  it  to  actual  use.  If  that  other  stopped 
with  that  conception,  the  validity  of  the  patent  is  not  affected 
thereby,  but  if  he  used  reasonable  diligence  in  adapting  and 
perfecting  the  invention  so  conceived,  no  subsequent  inventor 
can  have  a  valid  patent,  surreptitiously  or  unjustly  obtained  by 
him  for  the  same  invention.  Such  a  patent  is  surreptitiously 
obtained,  where  the  patentee  appropriates  the  idea  from  the  first 
conceiver,  and,  exceeding  him  in  speed,  reduces  the  invention 
to  proper  form,  and  secures  the  patent,  while  the  first  con- 
ceiver is  diligently  laboring  to  adapt  the  invention  to  use. 
Such  a  patent  is  unjustly  obtained,  if  it  is  issued  to  a  sub- 
sequent inventor,  without  notice  to  the  first  conceiver,  when 
a  caveat  of  the  first  conceiver  is  on  file  in  the  Patent  Office.* 
Where  this  defence  is  pleaded,  all  its  elements  must  be  incor- 
porated in  the  plea.  The  allegation  of  unjust  or  surreptitious 
obtaining  of  the  patent,  must  be  accompanied  by  an  allegation 
that  the  first  conceiver  was  at  the  time  using  reasonable  dili- 
gence in  adapting  and  perfecting  the  invention.4 

§  452.  The  ninth  and  tenth  defences  are  based  on  the  fact 


1  Railway  Co.  v.  Sayles,   97  U.  S.  1859. 

663,  1878.  4  Agawam  Co.  v.  Jordan,  7  Wallace, 

*  Revised  Statutes,  Section  4920.  583,  1868. 
s  Phelps  v.  Brown,  4  Blatch.  362, 


330  ACTIONS   AT   LAW.  [CHAP. 

that  patents  can  lawfully  be  granted  to  no  one  but  the  invent- 
ors of  the  things  covered  thereby,  or  to  those  who  represent 
them  as  assigns  or  legal  representatives.1  Neither  of  those 
defences  can  ever  receive  any  support  from  the  face  of  the 
patent,  or  from  any  fact  of  which  any  court  can  take  judicial 
notice.  Both  depend  upon  evidence  aliunde,  and  either  must 
be  interposed  in  a  special  plea,  for  the  statute  does  not  include 
either  among  those  defences  which  may  be  made  under  the 
general  issue  accompanied  by  notice. 

§  453.  The  eleventh  defence  may  be  set  up  under  the  gen- 
eral issue  accompanied  by  notice,2  or  in  a  special  plea.  It  is 
a  defence  which  is  oftener  put  in  by  pleaders  who  are  at  a  loss 
how  to  defend,  than  it  is  by  those  who  assail  patents  intelli- 
gently. It  has  seldom  or  never  been  made  with  success,  be- 
cause patents  are  seldom  or  never  obnoxious  to  the  objection 
which  it  involves.  Even  where  a  patent  does  contain  too 
much  or  too  little,  this  defence  does  not  apply,  unless  the  fault 
was  intended,  and  was  intended  to  deceive  the  public.8 

§  454.  The  twelfth  defence  is  somewhat  similar  to  the  first 
member  of  the  eleventh  ;  but  unlike  that,  it  cannot  be  based 
on  the  general  issue  accompanied  by  notice  ;  and  it  does  not 
require  the  element  of  intention  to  deceive.  It  is  based  upon 
that  provision  of  the  statute  which  makes  a  full,  clear,  concise, 
and  exact  description  of  the  invention  a  prerequisite  to  the 
jurisdiction  of  the  Commissioner  to  grant  a  patent.4  If  a 
patent  falls  below  the  statutory  requirement  in  that  respect, 
that  patent  is  void.6  Whether  a  given  patent  does  so  fall,  is 
a  question  of  evidence  and  not  of  construction.'  This  defence 
must  be  interposed  in  a  special  plea  ;  for  neither  the  statute 
nor  any  precedent  contemplates  its  being  based  on  the  general 
issue,  either  with  or  without  notice  ;  and  still  less  does  any 
rule  of  law  provide  for  its  being  made  on  the  trial  of  an  action 
without  being  pleaded  at  all. 

1  Sections  50  and  51  of  this  book.  5  O'Reilly  v.  Morse,  15   Howard, 

*  Revised  Statutes,  Section  4920.  62,  1853. 

*  Hotchkiss    v.    Oliver,    5    Denio  '  Loom  Co.  v.  Higgins,  105  U.  8. 
(N.  Y.)  314,  1848.  580,  1881. 

*  Revised  Statutes,  Section  4888. 


CHAP.   XVIII.]  ACTIONS    AT    LAW.  331 

§  455.  The  thirteenth  defence  is  based  on  the  statute  which 
requires,  that  before  any  inventor  shall  receive  a  patent  for  his 
invention,  he  shall  particularly  point  out,  and  distinctly  claim, 
the  part,  improvement,  or  combination  which  he  claims  as  his 
invention.1  It  is  a  defence  of  decided  merit,  aimed  by  the 
policy  of  the  law  at  nebulous  claims.  The  courts  have  not 
heretofore  gone  quite  so  far  in  upholding  this  defence,  as  the 
statute  would  perhaps  justify.  Probably  the  strongest  judi- 
cial language  heretofore  used  on  the  subject,  is  that  of  the 
Supreme  Court  in  the  case  of  Carlton  v.  Bokee."  In  that 
case,  Justice  BRADLEY,  in  delivering  the  opinion,  said  that  : 
"  "Where  a  specification  by  ambiguity  and  a  needless  multipli- 
cation of  nebulous  claims,  is  calculated  to  deceive  and  mislead 
the  public,  the  patent  is  void."  A  special  plea  is  also  the  best 
and  safest  means  of  interposing  this  defence  ;  though  there  is 
less  meritorious  necessity  for  special  pleading  in  support  of  it, 
than  in  support  of  any  other  defence  which  assails  the  validity 
of  a  patent.  The  question  of  such  validity,  as  against  this 
defence,  is  a  question  of  construction  of  the  document,  to 
decide  which,  a  judge  will  seldom  require  aid  from  outside 
the  letters  patent  themselves. 

§  456.  The  fourteenth  defence  is  based  upon  the  statute 
which  provides  that  where  a  new  invention  and  an  old  one  are 
both  claimed  in  a  patent,  the  patentee  may  sustain  an  action 
on  the  former,  but  not  unless  he  disclaims  the  latter  without 
unreasonable  delay.8  That  the  old  invention  was  old,  and 
that  the  delay  to  disclaim  it  was  unreasonable,  are  matters  of 
fact  depending  upon  evidence.  There  is  therefore  no  reason 
to  suppose  that  this  defence  can  be  made  in  any  action  at  law, 
without  a  special  plea  to  give  it  entrance. 

§  457.  The  fifteenth  defence  goes  to  the  jurisdiction  of  the 
Commissioner  to  reissue  the  patent  in  suit.  In  the  chapter  on 
reissues,  the  defence  is  discussed  with  some  fulness.*  What- 
ever doubt  may  exist  relevant  to  its  validity,  it  is  clear  that 


1  Bevised  Statutes,  Section  4888.  *  Revised  Statutes,  Section  4922. 

*  Carlton    v.   Bokee,   17  Wallace,          *  Sections  221  to  225  of  this  book. 
472,  1873. 


332  ACTIONS    AT   LAW.  [CHAP.  XVm. 

the  questions  wliich  are  involved  in  its  applicability  to  a  par' 
ticular  case,  are  mainly  questions  of  fact,  depending  upon 
evidence  in  pais,  and  that  a  special  plea  is  therefore  the 
proper  means  of  bringing  it  to  the  attention  of  the  court. 

§  458.  The  sixteenth  defence  originated  in  the  year  1882,' 
and  though  not  based  on  the  letter  of  any  statute,  it  has  already 
been  many  times  enforced.  The  first  element  in  its  founda- 
tion is  a  point  of  comparative  construction  of  the  original  and 
the  reissued  patent.  But  inasmuch  as  a  plaintiff,  suing  on  a 
reissue,  need  not  introduce  the  original  in  evidence,  even  that 
element  depends  upon  proof  by  the  defendant  of  the  contents 
of  the  original.  The  second  element  is  a  variable  quantity, 
for  the  particular  length  of  time,  between  the  date  of  an 
original  and  the  application  for  a  reissue  patent,  which  will  be 
fatal  to  a  broadened  reissue,  depends  upon  the  circumstances 
of  each  case,  and  those  circumstances  can  be  made  known  to 
the  court  throngli  evidence  alone.  These  considerations  point 
to  the  propriety  of  disregarding  this  defence,  in  an  action  at 
law,  unless  it  is  set  up  in  a  special  plea,  and  the  plaintiff  thus 
notified  of  what  he  must  meet  on  the  trial. 

§  459.  The  seventeenth  defence  is  among  the  most  common  in 
patent  litigation.  It  also  depends  upon  proof  of  the  original 
patent,  and  requires  at  least  that  amount  of  evidence  to  sup- 
port it.  In  cases  where  the  question  of  sameness  or  difference 
of  invention  is  a  complicated  one,  courts  will  generally  require 
the  benefit  of  evidence  on  that  subject  to  aid  them  in  deciding 
the  point.1  In  order  to  give  both  sides  an  opportunity  to 
produce  such  evidence,  a  special  plea  is  necessary  to  be  insisted 
upon.  Such  a  requirement  is  consistent  also  with  the  practice 
in  equity,  where  this  defence  has  been  interposed  on  that  side 
of  the  courts. 

§  460.  The  eighteenth  defence  has  seldom  been  made,  and 
lias  never  been  made  successfully  in  any  reported  case.  It 
will  probably  never  again  be  applicable  to  any  extension,  for 
extensions  capable  of  being  sued  upon  are  rapidly  diminishing 

1  Miller  v.  Brass  Co.  104  U.  8.  *  Powder  Co.  v.  Powder  Works,  98 
350,  1882.  U.  S.  134,  1878. 


CHAP.  XVIII.]  ACTIONS    AT   LAW.  333 

in  number.  If  an  occasion  should  arise  for  its  interposition,  it 
ought  to  be  set  up  in  a  special  plea,  for  it  depends  upon  a 
point  of  fact,  and  one  upon  which  evidence  outside  of  the  pat- 
ent is  likely  to  be  required. 

§  461.  The  nineteenth  defence  will  of  course  require  evi- 
dence of  the  record  of  the  court  which  repealed  the  patent. 
But  as  that  record  cannot  be  contradicted  by  any  evidence,  and 
as  no  repeal  could  have  been  had  without  the  knowledge  of 
the  plaintiff  or  his  privies,  there  seems  to  be  no  meritorious 
reason  why  a  special  plea  should  be  insisted  upon  to  sustain 
this  defence.  But  in  the  absence  of  a  precedent,  that  will  be 
the  safest  pleading  for  the  defendant  to  file. 

§  462.  The  twentieth  defence  demands  a  special  plea,  because 
the  evidence  to  prove  it  must  come  from  outside  of  the  patent, 
and  when  produced  it  must  generally  be  supported  by  expert 
testimony  that  the  foreign  patent  produced  is  really  one  for 
the  same  invention  as  the  United  States  patent  in  suit.  Indeed 
the  defence  may  fail  even  then,  for  it  cannot  stand  against 
proof  that  the  foreign  patent  was  surreptitiously  taken  out  by 
another  than  the  United  States  patentee,  and  without  his 
knowledge  or  consent.  It  would  be  highly  unjust  to  allow  a 
plaintiff  to  be  surprised  on  the  trial  of  an  action  at  law,  with 
proof  of  a  foreign  patent  for  his  invention  granted  to  another 
after  his  invention  was  made,  but  before  the  date  of  his  patent. 
Such  a  piece  of  evidence,  L  unexplained,  would  limit  the 
duration  of  the  United  States  patent,  and  thus  perhaps  defeat 
the  suit.'  But  if  the  plaintiff  could  have  time  to  prove  that 
it  was  granted  without  the  knowledge  or  consent  of  the  in- 
ventor or  patentee,  it  would  have  no  unfavorable  effect  upon 
his  rights.  It  is  clear,  therefore,  that  no  such  issue  ought  to 
be  sprung  upon  a  plaintiff  when  before  the  court.  A  special 
plea  is  requisite  to  give  him  notice  of  a  fact  apparently  so 
unfavorable,  but  which  may  really  be  harmless  when  ex- 
plained. 

§  463.  The  twenty-first  defence  is  prima facie  made  out,  by 
proof  that  the  plaintiff  made  or  sold  specimens  of  his  invention 

1  Revised  Statutes,  Section  4887. 


334  ACTIONS    AT   LAW.  [CHAP.   XVIII. 

without  marking  them  "patented."  But  it  can  be  at  least 
partly,  and  perhaps  wholly,  overthrown  by  proof  that  the 
defendant  continued  to  infringe,  after  he  was  duly  notified  of 
the  patent  and  of  his  infringement.1  It  is  therefore  certain 
that  the prima  facie  evidence  ought. not  to  be  admitted  without 
a  special  plea,  because  if  it  were,  a  verdict  might  be  based  on 
only  half  of  the  truth,  even  where  the  other  half  would  have 
led  to  a  contrary  conclusion  if  the  plaintiff  had  been  notified 
of  the  necessity  of  producing  the  evidence  to  prove  it." 

§  464.  The  twenty-second  defence  can  be  made  under  the 
general  issue,  where  the  defendant  merely  proposes  to  argue 
that  the  plaintiff's  evidence  does  not  make  out  any  title,  or 
makes  out  no  such  title  as  enables  him  to  sue  in  an  action  at 
law.  But  where  the  defendant  attacks  the  plaintiff's  title  on 
the  basis  of  a  paramount  assignment  to  another,  he  ought  to 
plead  the  defence  specially,  for  otherwise  the  plaintiff  might 
be  surprised  on  the  trial  with  evidence  which,  with  a  little  time 
for  preparation,  he  -could  perhaps  explain  away,  or  perhaps 
overthrow. 

§  465.  The  twenty -third  and  twenty-fourth  defences  both 
required  to  be  pleaded  specially  according  to  the  pleading  rules 
of  the  ancient  common  law.3  But  under  the  relaxation 
which  obtained  in  England,  late  in  the  last  century,  they 
could,  in  ordinary  cases,  have  been  proved  under  the  general 
issue.4  That  relaxation  does  not,  however,  deserve  to  be  ex- 
tended by  any  process  of  reasoning  by  analogy  ;  and  it  is  pos- 
sible that  the  courts  will  hold  that  it  does  not  apply  to  patent 
litigation  in  the  United  States. 

§  466.  The  twenty-fifth  defence  is  one  to  which  the  plea  of 
the  general  issue  is,  and  always  was,  appropriate,  for  it  is  a 
defence  which  consists  simply  in  a  denial  of  the  alleged  in- 
fringement.6 And  even  where  a  proper  defence  of  non- 
infringement  involves  evidence  of  the  state  of  the  art,  the 
general  issue  is  a  sufficient  plea  under  which  to  make  such  a 


1  Revised  Statutes,  Section  4900.  3  Stephen  on  Pleading,  158. 

*  Rubber  Co.  v.  Goodyear,  9  Wai-          *  1  Chitty  on  Pleading,  491. 

lace  801,  1869.  •  Stephen  on  Pleading,  160. 


CHAP.    XVIII.]  ACTIONS    AT    LAW.  335 

defence,  because  no  notice  to  the  plaintiff  is  necessary  to  ren- 
der such  evidence  admissible.1 

§  467.  The  twenty-sixth  defence  is  as  proper  in  an  action 
at  law  as  it  is  in  an  action  in  equity.3  Estoppels  in  patent 
cases  are  like  those  in  other  cases,  in  that  they  are  divisible 
into  three  classes  :  Estoppels  by  matter  of  record  ;  by  matter 
of  deed  ;  and  by  matter  in  pais.  The  principles  of  estoppel 
constitute  a  systematic  department  of  the  law,  to  the  develop- 
ment and  delineation  of  which  a  number  of  text-writers  have 
devoted  careful  and  thorough  consideration.  No  extensive 
discussion  of  the  subject  is  therefore  to  be  expected  in  this 
book.  Something  has  already  been  written  about  estoppel  in 
pais,  in  connection  with  the  subject  of  implied  licenses.3 
Something  more  may  be  added  in  this  place,  about  estoppels 
by  matter  of  record,  and  by  matter  of  deed,  for  the  patent 
precedents  contain  a  few  cases  in  wln'ch  those  doctrines  have 
been  applied  to  controversies  touching  letters  patent  for  in- 
ventions. But  the  investigator  will  often  need  to  resort  to 
the  standard  text-books  on  estoppel,  when  seeking  for  the  law 
applicable  to  such  matters,  as  they  may  hereafter  arise  in  patent 
litigation  ;  for  the  instances  in  which  the  doctrines  of  estoppel 
have  heretofore  been  applied  to  patent  cases  are  comparatively 
few.  Those  doctrines  may,  however,  be  deduced  from  other 
kinds  of  causes,  and  then  applied  in  patent  litigation  with  all 
their  inherent  force.4 

§  468.  Estoppel  by  matter  of  record  arises  out  of  the  doc- 
trine of  res  judicata ;  and  indeed  that  sort  of  estoppel  gen- 
erally and  properly  passes  under  the  name  of  that  doctrine. 
It  is  a  requirement  of  public  policy  and  of  private  peace, 
that  each  particular  litigation  shall  duly  come  to  an  end,  and 
that  when  once  ended,  it  shall  not  be  revived.  The  law 
therefore  properly  requires  that  things  adjudicated,  shall  not 
again  be  drawn  in  question  between  the  same  parties,  or  be- 

1  Agawam  Co.  v.  Jordan,  7  Wallace,  584,  1879  ;  City  of  Concord  v.  Nor- 

583,  1868  ;  Blanchard  v.  Putnam,  8  ton,  16  Fed.  Kep.  477,  1883. 
Wallace,  420,  1869  ;  Dunbar  u.  My-  3  Section  313  of  this  book, 

ers,  94  U.  S.  198,  1876.  *  Dnboiae  v.  Railroad  Co.  5  Fisher, 

*  Dickerson  v.  Colgrove,  100  U.  8.  208,  1871. 


336  ACTIONS   AT    LAW.  [CHAP.   XVIII. 

tween  any  persons  whose  connection  witli  the  adjudication  is 
such  that  they  ought  not  to  be  permitted  to  gainsay  its  result. 
But  things  are  not  adjudicated  in  this  sense  till  they  are  adju- 
dicated finally.  Interlocutory  decrees,  therefore,  furnish  no 
foundation  for  a  plea  of  res  judicata.1  A  final  decree  is 
pleadable,  in  a  subsequent  action,  notwithstanding  the  defend- 
ant may  have  new  defences  to  interpose  :  defences,  which  he 
did  not  deem  it  necessary  to  make  to  the  former  suit,  or  did  not 
learn  of  in  time  to  set  them  up  in  the  former  litigation.2  And 
final  decrees  or  judgments  are  not  only  binding  on  the  parties 
to  the  actions  from  which  they  resulted,  but  they  are  also 
binding  upon  all  persons  who  purchase  interests  in  the  subject- 
matter  of  litigation  after  such  decrees  or  judgments  are 
entered  ; '  and  upon  all  persons  who  assumed  the  control 
and  expense  of  the  former  litigation,  even  though  not  parties 
thereto.4  So  also,  judgments  by  default  and  decrees  pro  con- 
fesso  are  pleadable  as  res  judicata,  if  they  are  final  in  their 
nature,  with  the  same  effect  as  are  judgments  or  decrees  which 
were  rendered  after  a  long-contested  litigation.5  But  in 
order  to  be  binding  on  either  party  to  a  new  action,  a  former 
judgment  or  decree  must  be  binding  on  both.  No  former 
adjudication  is  pleadable  in  favor  of  either  party  to  a  suit 
unless  it  would  have  been  pleadable  against  him,  if  it  had 
been  rendered  the  other  way." 

§  469.  Estoppel  by  matter  of  deed  may  also  arise  in  patent 
affairs.  "Where,  for  "example,  an  assignor  or  grantor  of  a  pat- 
ent right,  afterward  infringes  the  right  which  he  conveyed, 
he  is  estopped,  by  his  conveyance,  from  denying  the  validity 
of  the  patent,  when  sued  for  its  infringement.7 


1  Rumford    Chemical    Works    v.  B  Bradford   v.    Bradford,    5    Con- 

Hecker,  2  Bann.  &  Ard.  359,  1876.  necticut,  131,  1823  ;  Davis  v.  Mur- 

4  Duboise  v.  Railroad  Co.  5  Fisher,  phy,  2  Rich.  (S.  C.),  560,  1846. 

210,  1871.  «Ingersoll  v.  Jewett,    16  Blatch. 

3  Consolidated   Frnit  -  Jar  Co.    v.  378,    1879  ;    Dale     v.    Rosevelt,    1 

Whitney,  2  Bann.  &  Ard.  33,  1875.  Paige  (N.  Y.)  35,  1828  ;   Paynes  v. 

*  United    States    Felting    Co.    v.  Coles,  1  Munford  (Va )  394,  1810. 

Asbestos  Felting  Co.  4  Fed.  Rep.  816,  7  Consolidated  Middlings  Purifier 

1880.  Co.  v  Guilder,  9  Fed.  Rep.  156,  1881. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  337 

§  470.  The  defence  of  estoppel  requires  a  special  plea  to 
introduce  it  into  a  litigation.  Thus,  for  example,  if  a  former 
judgment  or  decree  is  not  pleaded  as  an  estoppel  by  a  defend- 
ant, he  refers  the  merits  of  the  controversy  anew  to  the  court. 
The  former  adjudication  may  be  used  as  an  argument,  but  it 
cannot  be  relied  upon  as  a  bar,  unless  it  is  set  up  in  a  special 
plea.' 

§  471.  The  twenty-seventh  defence  must  always  be  specially 
pleaded  by  the  defendant,  or  it  will  be  disregarded  by  the 
court.3  No  defendant  can  avail  himself  of  any  statute  of 
limitation,  upon  the  general  issue.3  In  the  matter  of  plead- 
ing this  defence,  there  is  therefore  no  mystery  and  no  doubt. 
But  when  the  pleader  looks  for  a  particular  statute  of  limita- 
tion to  set  up  in  a  particular  case,  he  is  likely  to  encounter 
some  of  the  most  complex  and  difficult  questions  he  ever  met. 
An  explanation  of  the  subject  may  therefore  properly  be  in- 
serted in  this  place. 

§  472.  Section  55  of  the  Patent  Act  of  1870  related  to 
remedies  for  infringements  of  patents,  and  its  final  clause 
provided  that  :  ' '  All  actions  shall  be  brought  during  the  term 
for  which  the  letters  patent  shall  be  granted  or  extended,  or 
within  six  years  after  the  expiration  thereof."4  That  enact- 
ment continued  to  be  in  full  force  until  the  passage  of  the 
Revised  Statutes,  June  22,  1874.  It  was,  however,  omitted 
from  that  compilation,  and  by  operation  of  Section  5596,  was 
thereby  repealed  as  to  all  rights  of  action  thereafter  to  accrue  ;; 
but  by  virtue  of  Section  5599  it  was  left  in  full  force  as  to  all 
rights  of  action  in  existence  at  the  date  of  the  repeal.  No- 
farther  national  legislation  has  been  had  relevant  to  the  subject, 
up  to  the  time  of  the  publication  of  this  book.  This  national; 
statute  of  limitation  has  no  application  to  any  infringement 
committed  since  June  22,  1874.  It  applies  fully  to  all  in- 
fringements committed  between  that  day  and  July  8,  1870, 
the  day  whereon  it  was  enacted.  To  what  extent  it  applies 


1  1  Chitty  on  Pleading,  509.  cnit  Court  Reports,  57,  1802. 

9 1  Chitty  on  Pleading,  498.  4 16  Statutes  nt  Large,  Ch.  230;. 

*Neale  y.  Walker,  1  Cranch's  Cir-       Sec.  55,. p.  206. 


338  ACTIONS   AT    LAW.  [CHAP.   XVIII. 

to  infringements  committed  before  the  latter  date  is  an 
intricate  question.  It.  is  convenient  first  to  examine  that 
point  ;  and  having  ascertained  it  as  well  as  may  be,  to  in- 
quire what  is  the  true  construction  of  the  statute  as  to  those 
rights  of  action  to  which  it  is  found  to  apply. 

§  473.  Rights  of  action  based  on  infringements  of  patents 
which  expired  more  than  six  years  before  July  8,  1870, 
would,  according  to  the  terms  of  the  statute  of  that  date,  be 
barred  the  moment  of  its  approval  by  the  President.  Now 
while  the  legislative  power  has  constitutional  authority  to  make 
a  statute  of  limitation  retroactive  to  the  extent  of  making  it 
apply  to  rights  of  action  already  accrued,  it  has  no  authority 
to  make  such  a  statute  retroactive  to  the  extent  of  making  it 
cut  off  a  right  of  action  the  moment  of  its  passage.  To  do 
the  latter  thing,  would  be  to  deprive  persons  of  property 
without  due  process  of  law,  and  would  therefore  be  unconsti- 
tutional.1 Where  a  statute  of  limitation,  if  literally  construed, 
would  have  that  effect,  the  courts  will  avoid  that  result  by 
construction.  Some  courts  have,  with  this  purpose,  held  that 
such  a  statute  does  not  apply  at  all  to  rights  of  action  old  enough 
to  be  fully  barred  by  it  at  the  time  of  its  passage.  Others 
have  held  that  such  rights  of  action  may  be  sued  on  after  the 
passage  of  such  a  statute,  if  the  actions  are  brought  within  a. 
reasonable  time  after  its  passage.  The  Supreme  Court  of  the 
United  States  has  decided  that  such  rights  of  action  may  be 
sued  upon  within  the  same  length  of  time  after  the  passage  of 
such  a  statute,  as  that  within  which  the  statute  provides  that 
subsequently  accruing  rights  of  action  must  be  sued  upon 
after  they  accrue.2  It  is  certain,  therefore,  that  all  rights  of 
action  for  infringements  of  patents  which  expired  before  July 
8,  1864,  are  now  barred  by  the  national  statute  of  limitation, 
unless  actions  were  begun  to  enforce  them  as  early  as  July 
8,  1876.  The  same  considerations  apply  with  equal  force 
to  patents  which  expired  between  July  8,  1864,  and  July 
8,  1870  ;  and  all  rights  of  action  based  on  infringements  of 

1  Fifth  Amendment  to  the  Consti-          *  Sphn  v.  Waterson,   17  Wallace, 
tution  of  the  United  States.  596,  1873. 


CHAP.   XVIII.]  ACTIONS    AT    LAW.  339 

those  patents  are  also  barred,  unless  actions  were  brought  to 
enforce  them  within  six  years  after  the  last  mentioned  day. 

§  474.  Infringements  committed  before  July  8,  18TO,  of 
patents  which  did  not  expire  till  after  that  time,  are  doubtless 
subject  to  the  operation  of  the  national  statute  in  precisely  the 
same  way  as  are  infringements  committed  while  that  statute 
was  in  full  force,  to  wit,  between  July  8,  1870,  and  June 
22,  1874.  The  owners  of  rights  of  action  arising  out  of 
either  of  these  classes  of  infringement,  had  at  least  six  years  in 
which  to  begin  actions  for  their  enforcement  ;  and  it  is  there- 
fore clear  that  the  courts  will  do  nothing  by  way  of  construc- 
tion to  relieve  them  from  the  literal  operation  of  the  statute. 

§  475.  The  application  to  unextended  patents  of  the  points 
of  law  which  are  explained  in  the  last  two  sections,  is  compara- 
tively plain  ;  but  when  those  points  require  to  be  applied  to 
extended  patents,  an  additional  complication  arises.  Does  the 
national  statute  of  limitation  treat  the  first  fourteen  years  of  a 
patent  separately  from  the  last  seven  years,  or  does  it  treat 
both  spaces  of  time  as  one  term  of  twenty-one  years  ?  This 
inquiry  is  immaterial  to  the  welfare  of  rights  of  action  under 
the  extended  term  of  a  patent ;  but  it  may  be  vital  to  those 
which  arose  under  an  original  term.  If  the  statute  means, 
that  actions  based  on  an  original  term  must  be  brought  within 
six  years  after  the  expiration  of  that  term,  they  are  barred 
seven  years  sooner  than  they  are  if  the  statute  means  that  all 
actions  under  a  particular  patent,  may  be  brought  during  any 
part  of  the  life  of  that  patent,  or  within  six  years  after  its 
final  expiration.  Whether  the  statute  has  the  one  or  the  other 
of  these  meanings,  is  an  unsettled  question.  The  best  of  the 
arguments  in  favor  of  the  first  view  are  contained  in  a  decision 
of  Judge  BAER  ; '  and  some  of  those  supporting  the  second 
view  are  to  be  found  in  an  opinion  of  Judge  HUGHES."  The 
only  other  decisions  of  the  point  which  are  contained  in  the 
reports,  are  those  of  Justice  HAKLAN,"  and  of  Judges  DILLON 

1  Sayles'  Executor  v.  Railroad  Co.  Bann.  &  Ard.  431,  1879. 
9  Fed.  Rep.  512,  1881 .  3  Sayles  v.  Lake  Shore  and  Michi- 

5  Sayles  v.  Richmond,  Fredericks-  gan  Southern    Railway  Co.   9  Fed. 

burg    &   Potomac    Railroad    Co.   4  Rep.  515, 1879. 


340  ACTIONS    AT    LAW.  [CHAP.  XVIII. 

and  LOVE.'  All  of  these  learned  jurists  held  the  first  view  of 
the  question  :  held  that  actions  for  infringements  of  the  first 
term  of  an  extended  patent,  must,  according  to  the  national 
statute  of  limitation,  be  brought  during  that  term,  or  within 
six  years  after  the  expiration  thereof. 

§  476.  State  statutes  of  limitation  can  never  apply  to  any 
right  of  action  under  a  patent,  if  that  particular  right  is  sub- 
ject to  the  running  of  a  national  statute  of  limitation.8  This 
point  of  law  follows  from  the  fact  that  the  States  have  no 
right  to  control  the  operation  of  the  patent  laws  ; '  and  from 
the  fact  that  Congress  never  adopted  State  laws  for  the  govern- 
ment of  Federal  courts,  in  any  case  where  the  Constitution, 
treaties,  or  statutes  of  the  United  States  specially  attend  to  the 
subject.4  The  rule  of  this  section  applies  even  to  rights  of 
action  that  were  old  enough,  at  the  time  of  the  approval  of 
the  national  limitation,  to  have  been  fully  barred  by  some 
State  limitation,  if  they  had  been  sued  upon,  and  if  the  State 
limitation  had  been  pleaded,  and  had  been  held  to  be  appli- 
cable. This  last  point  follows  from  the  rule  that  the  statute 
in  force  when  the  suit  is  brought,  determines  the  right  of  a 
party  to  sue  for  a  claim.5  If,  therefore,  for  example,  an 
action  is  begun  after  July  8,  1870,  and  before  July  8, 
1884,  for  infringement  committed  before  July  8,  1865,  of  a 
seventeen  years  patent,  granted  July  8,  1861  ;  that  action 
will  not  be  barred  by  any  five  years  State  statute  of  limitation  ; 
because  the  case  is  still  provided  for  by  the  national  statute  on 
the  subject  of  limitation  of  actions  for  infringements  of  pat- 
ents ;  and  because  the  statute  in  force  when  the  action  is 
begun,  and  not  any  statute  which  might  have  been  in  force 
when  it  might  have  been  begun,  is  the  one  to  determine 
whether  it  can  be  si; stained.  Nor  will  such  a  right  of  action 
be  barred  by  the  national  limitation,  if  it  is  sued  upon  before 

1  Sayles  v.    Dubuque  and    Sioux  ton,  436,  1819. 

City    Railroad    Co.    5   Dillon,    562,  *  Revised  Statutes,  721  ;  Section  34 

1878.  of    the   Judiciary   Act  of   1789  ;    1 

1  Sayles   v.  Oregon   Central  Rail-  Statutes  at  Large,  Ch.  20,  p.  92. 

road  Co.  4  Bann.  &  Ard.  429,  1879.  6  Patterson  v.  Gaines,  6  Howard, 

1  M'Culloch  v.  Maryland,  4  Whea-  601,  1848. 


CHAP.    XVIII.]  ACTIONS    AT    LAW.  341 

July  8,  1884,  because  it  will  in  that  event  be  sued  upon 
jrithin  six  years  after  the  expiration  of  the  patent.  It  follows 
from  the  foregoing  that  an  action  may  still  be  successfully 
brought  for  any  infringement  which  was  committed  before 
June  22,  1874,  of  any  seventeen-years  patent  which  has  not 
yet  expired,  or  which  expired  less  than  six  years  before  such 
action  is  brought.  It  follows  also,  that  no  action  can  hereafter 
be  commenced,  for  any  infringement  committed  before  the 
last-mentioned  day  of  any  unextended  fourteen -years  patent, 
because  every  such  patent  expired  more  than  six  years  ago. 
"Whether  any  action  can  hereafter  be  begun,  upon  any  in- 
fringement, committed  before  the  last-mentioned  day,  of  the 
first  term  of  any  extended  fourteen-years  patent,  depends  first 
upon  whether  the  extension  expired  more  than  six  years  be- 
fore such  suit  is  brought,  and  if  it  did  not,  then  the  question 
depends  upon  the  answer  to  the  question  stated  and  explained 
in  Section  475  of  this  book.  Whether  any  action  can  hereafter 
be  brought  for  any  infringement  committed  before  the  last- 
mentioned  day  of  the  extended  term  of  any  fourteen-years 
patent,  depends  upon  whether  that  extended  term  expired 
more  than  six  years  before  such  action  is  begun.  Thus  it  ap- 
pears that  all  suits  for  infringements  which  were  committed 
before  June  22, 1874,  may  stand  or  must  fall  according  to  the 
national  statute  of  limitation.  Actions  based  on  infringe- 
ments committed  since  the  last-named  day,  are  subject  to  no 
statute  of  limitation,  or  to  those  of  the  States  alone. 

§  477.  Whether  State  statutes  of  limitation  apply  to  such 
rights  of  action  for  infringements  of  patents,  as  are  not  sub- 
ject to  any  national  limitation,  is  a  very  important  and  much 
controverted  question.  It  has  never  been  decided  or  discussed 
in  any  Supreme  Court  case  ;  but  on  the  circuit,  it  has  four 
times  been  decided  in  the  affirmative,^  and  six  times  in  the 
negative,3  and  once  the  judges  leaned  strongly  to  the  nega- 

1  Parker    v.  Hall,  2    Fisher,    62,  8  Parker  v.  Hallock,  2  Fisher,  543, 

1857  ;  Parker  v.  Hawk,  2  Fisher,  58,  1857  ;  Collins  v.  Peebles,  2  -Fisher, 

1857  ;    Rich  v.    Ricketts,  7    Blatch.  541,  1865  ;  Read  v.  Miller,  2  Bissell, 

230,  1870  >  Hayden  ti.  Oriental  Mills,  16,  1867  ;    Wetherill  v.  Zinc  Co.   1 

15  Fed.  Rep.  605,  1883.  Bann.  &  Aid.  489,  1874  ;  Anthony  u. 


342  ACTIONS    AT    LAW.  [CHAP.   XVIII. 

tive  opinion,  though  they  left  the  point  open  to  further 
debate.'  The  last  of  the  affirmative  decisions  was  delivered 
by  Judge  LOWELL,  and  is  abler  than  either  of  the  other 
opinions  on  that  side  of  the  question  ;  while  his  predecessor, 
Judge  SHEPLEY,  delivered  the  strongest  of  the  opinions  which 
support  the  negative  view. 

Those  who  hold  the  affirmative  of  the  question,  must  base 
their  argument  on  Section  721  of  the  Revised  Statutes,  which 
is  a  substantial  and  nearly  literal  transcript  of  Section  34  of 
the  Judiciary  Act  of  1T89,  and  which  provides  :  "  That  the 
laws  of  the  several  States,  except  where  the  Constitution, 
treaties,  or  statutes  of  the  United  States  otherwise  require  or 
provide,  shall  be  regarded  as  rules  of  decision  in  trials  at  com- 
mon law,  in  the  courts  of  the  United  States,  in  cases  where 
they  apply."  This  language  appears  to  be  broad  enough  to 
cover  the  application  to  a  patent  suit,  of  a  State  statute  pre- 
scribing the  time  within  which  actions  of  trespass  on  the  case 
must  be  begun.  But  the  Supreme  Court  has  held  that  : 
"  The  section  above  quoted  was  merely  intended  to  confer  on 
the  courts  of  the  United  States,  the  jurisdiction  necessary  to 
enable  them  to  administer  the  laws  of  the  States."  a  If  that 
doctrine  is  adhered  to  by  that  court,  it  will  follow  that  State 
statutes  of  limitation  do  not  apply  to  patent  actions  in  the 
Federal  courts.  But  the  holding  in  the  case  of  the  United 
States  v.  Reid,  does  not  seem  to  have  been  constantly  remem- 
bered by  the  Supreme  Court  justices,  for  while  Chief  Justice 
TANEY,  who  delivered  that  opinion,  still  sat  upon  the  bench, 
the  court  three  times  decided  that  State  statutes  relevant  to 
rules  of  evidence  are  applicable  to  patent  actions  at  law  in 
Federal  courts.1 

In  view  of  the  foregoing  contradictory  authorities,  it  is  cer- 
tain that  the  question  is  deeply  enveloped  in  doubt.  The  point 

• 

Carroll,  2  Bann.  &  Ard.   195,   1875  ;          9  United  States  v.  Reid,  12  How- 

Siiyl'-s  v.  Lake  Shore  and  Michigan  ard,  363,  1851. 

Southern  Railway  Co.  9  Fed.    Rep.  »  Vance  v.  Campbell,  1  Black,  430, 

515.  1878.  1861  ;   Haussknecht  v.   Claypool,    1 

1  Saylea    u.    Dubuque    and  Sionx  Black,  435,   1861  ;  Wright  v.  Bales, 

City  Railroad  Co.  5  Dillon,  562,  1878.  2  Black,  535,  1862. 


CHAP.   XVIII.]  ACTIONS    AT   LAW.  343 

ought  therefore  to  be  decided  in  the  negative,  for  rights  of 
property  ought  not  to  be  cut  off  by  any  statute  of  limitation, 
unless  that  statute  is  clearly  applicable  to  those  rights.1 

§  478.  Replications  and  subsequent  pleadings  are  seldom 
required  in  patent  cases,  because  most  of  the  pleas  applicable 
to  such  cases,  are  pleas  in  bar  by  way  of  traverse,  and  not  by 
way  of  confession  and  avoidance.  The  principal  exceptions 
are  the  plea  of  a  license  ;  the  plea  of  a  release  ;  and  the  plea 
of  a  statute  of  limitation.  If  the  plaintiff  purposes  to  deny 
the  existence  of  a  license  or  release,  as  the  case  may  be,  his 
replication  should  be  by  way  of  traverse  to  the  plea,  and  should 
conclude  to  the  country,  and  thus  tender  issue.  So,  also,  if  the 
plaintiff  can  show  that  the  license  or  release  covered  only  a 
part  of  the  infringement  covered  by  the  declaration,  the  gen- 
eral replication  by  way  of  traverse  will  be  sufficient.*  If  the 
plaintiff  cannot  deny  the  existence  of  a  full  paper,  but  pur- 
poses to  show  that 'it  was  obtained  by  duress  or  by  fraud,  or 
that  it  has  been  effectually  revoked,  his  replication  will  state 
the  facts  by  way  of  confession  and  avoidance  of  the  plea,  and 
will  conclude  with  a  verification.  It  will  then  be  the  duty  of 
the  defendant  to  file  a  rejoinder  to  the  replication.  If  he  can 
deny  the  duress,  or  the  fraud,  or  the  revocation,  as  the  case  may 
be,  his  rejoinder  will  be  by  way  of  traverse,  and  will  conclude 
by  tendering  issue.  If,  however,  lie  cannot  deny  the  truth 
of  the  replication,  but  can  avoid  its  effect  by  showing  that  the 
plaintiff  freely  ratified  the  license  or  release  after  the  alleged 
duress  terminated,  or  the  alleged  fraud  became  known  to  him, 
or  that  he  annulled  the  revocation  after  making  it,  then  the 
defendant's  rejoinder  will  be  by  way  of  confession  and  avoid- 
ance, and  will  conclude  with  a  verification,  and  will  render 
necessary  a  sur-rejoinder  from  the  plaintiff,  denying  the  truth 
of  the  rejoinder,  and  putting  himself  upon  the  country. 

§  479.  When  pleaded  to  an  action  based  on  an  infringement, 
committed  before  June  22,  1874,  of  an  unextended  patent,  or 


1  Bedell  v.  Janney,  4  Oilman  (HI.)       art,  32  Michigan,  28,  1875. 
208,  1847  ;  Elder  v.  Bradley,  2  Sneed  *  1  Chitty  on  Pleading,  596. 

(Tenn.)  253,  1354  ;  Lmdwig  v.  Stew- 


344  ACTIONS    AT    LAW.  [CHAP.  XVIII. 

of  the  extended  term  of  an  extended  patent,  the  national 
statute  of  limitation  will  require  a  replication  by  way  of 
traverse,  if  the  plaintiff  intends  to  show  that  the  action  was 
brought  during  the  term  for  which  the  patent  was  granted 
or  extended,  or  within  six  years  after  the  expiration  thereof. 
If  he  cannot  show  that,  it  will  be  useless  for  him  to  prosecute 
his  action  further.  No  replication  by  way  of  confession  and 
avoidance,  is  applicable  in  such  a  case,  because  there  are  no 
facts  which  take  a  case  out  of  the  national  statute  of  limitation. 
That  statute  makes  no  exceptions  in  cases  of  disability  of  the 
plaintiffs. 

§  480.  A  State  statute  of  limitation,  when  pleaded  to  an 
action  based  on  an  infringement  of  a  patent,  if  it  is  not  suc- 
cessfully met  by  a  demurrer,  will  require  a  replication  by  way 
of  confession  and  avoidance,  based  on  some  cause,  which,  ac- 
cording to  the  laws  of  the  particular  State  in  which  the  suit  is 
pending,  is  sufficient  to  take  the  case  out  of  the  statute.  If 
there  is  no  such  cause,  the  plaintiff  must  abandon  his  action, 
or  stand  upon  his  demurrer,  and  having  suffered  judgment, 
go  to  the  Supreme  Court  on  a  writ  of  error.  If  such  a  repli- 
cation is  filed,  the  defendant  must  file  a  rejoinder  by  way  of 
traverse,  and  tender  issue  by  putting  himself  upon  the 
country. 

§  481.  A  similiter  must  be  filed  or  added  by  or  on  behalf  of 
the  other  party,  whenever  either  the  plaintiff  or  defendant 
properly  tenders  issue.  As  the  party  to  whom  issue  is  well 
tendered,  has  no  option  but  to  accept  it,  the  similiter  may  be 
added  for  him.  It  is  a  mere  matter  of  form,  but  it  is  a  form 
which  should  always  be  attended  to,  in  common-law  pleading. 
Its  omission  has  sometimes  constituted  a  fatal  defect.1 

§  482.  A  demurrer  may  be  interposed,  by  either  party  in  an 
action  at  law,  to  any  pleading  of  his  opponent,  except  another 
demurrer.*  When  a  demurrer  is  interposed,  the  court  will  ex- 
amine all  the  pleadings  in  the  case,  and  will  generally  decide 
against  the  party  who  first  filed  a  substantially  defective  one.* 

1  Earle     v.    Hall,     22    Pickering  5  1  Chitty  on  Pleading,  661,  666. 

(Mass.)  102,  1839.  3  1  Chitty  on  Pleading,  668. 


CHAP.   XVIII.]  ACTIONS   AT    LAW.  345 

The  principal  exception  to  this  rule  is,  that  where  the  declara- 
tion is  the  pleading  demurred  to,  the  demurrer  will  not  be 
sustained  if  it  is  too  large  :  that  is,  if  it  is  pointed  at  an  entire 
declaration,  some  independent  part  of  which  is  good  in  law.1 
This  exception  does  not  apply  to  demurrers  to  pleas,"  or  repli- 
cations,3 or  rejoinders,4  for  it  is  in  the  nature  of  those  pleadings 
to  be  entire,  and  if  bad  in  part,  to  be  bad  for  the  whole. 

§  483.  Demurrable  declarations  occur  in  patent  cases  only 
when  the  plaintiff's  pleader  omits  some  of  the  allegations 
which  are  necessary  parts  of  such  a  pleading  ;  or  when  he 
makes  those  allegations  in  improper  form  ;  or  where  he  makes 
the  statement  of  infringement  cover  a  space  of  time,  part  or 
all  of  which  is  remote  enough  to  be  barred  by  some  applicable 
statute  of  limitation.  Every  such  fault,  except  those  of  the 
last  sort,  may  be  readily  cured  by  amendment.  It  will  rarely 
occur  that  the  whole  of  an  infringement  declared  upon,  can 
plausibly  be  claimed  to  be  barred  by  a  statute  of  limitation  ; 
but  it  may  not  hereafter  be  unusual,  for  declarations  to  allege 
that  the  infringement  sued  on,  began  during  the  original  term 
of  an  extended  patent,  and  was  continued  into  the  extended 
term  ;  or  to  allege  that  it  began  at  a  point  of  time  more  than 
six  years  before  the  beginning  of  the  action,  and  was  continued 
till  after  that  limit  was  passed.  If,  in  such  a  case,  the  defend- 
ant thinks  that  he  can  successfully  interpose  the  national,  or  a 
six -year  State  statute  of  limitation,  to  that  part  of  the  claim 
which  arose  under  the  first  term  of  the  patent,  or  to  that 
part  of  the  infringement  which  occurred  more  than  six  years 
before  the  bringing  of  the  suit,  as  the  case  may  be  ;  he  may 
raise  the  question  by  a  special  demurrer,  aimed  at  the  ques- 
tionable parts  of  the  rights  of  action  respectively.  If  in  such 
a  case  he  demurs  generally  to  the  whole  declaration,  his 
demurrer  will  be  overruled  ;  because  it  will  appear  on  the 
argument,  that  an  independent  divisible  part  of  the  rights  of 
action  sued  upon,  are  in  any  event  unbarred  by  the  statute.* 


1  1  Chitty  on  Pleading,  665.  \1  Chitty  on  Pleading,  651. 

*  1  Chitty  on  Pleading,  546.  8  1  Chitty  on  Pleading,  665. 

»  1  Chitty  on  Pleading,  644. 


346  ACTIONS    AT   LAW.  [CHAP.  XVIII. 

§  484.  Demurrers  to  pleas  may  be  frequently  expected  in 
patent  actions  at  law,  as  long  as  a  question  continues  to  be  enter- 
tained relevant  to  the  validity  of  any  of  the  twenty-seven  de- 
fences heretofore  enumerated  and  explained.1  Most  of  those 
defences  rest  upon  unquestioned  grounds  :  upon  express 
statutes  of  Congress,  or  upon  express  decisions  of  the  Supreme 
Court.  But  a  few  of  them  rest,  at  this  writing,  upon  argu- 
mentative deductions  from  such  statutes  or  from  such  decisions, 
or  rest  upon  obiter  dicta  of  that  high  tribunal.  There  will 
always  be  pleaders  who  will  call  those  deductions  and  those 
dicta  in  question,  as  occasion  serves,  until  they  are  passed 
upon  by  the  Supreme  Court  in  judicial  decisions.  Where  the 
various  defences  are  distinctly  made  in  special  pleas,  a  demurrer 
to  each  of  those  which  are  thought  to  be  bad  in  law,  is  the 
proper  mode  of  presenting  the  question  to  the  court.  Where 
a  statute  of  limitation  is  pleaded  to  the  whole  of  a  right  of 
action,  only  a  part  of  which  is  old  enough  to  be  barred  there- 
by, a  demurrer  to  the  plea  will  be  sustained,  because  a  plea 
which  is  bad  in  part  is  bad  altogether." 

§  485.  A  demurrer  to  the  replication  will  be  proper  in  an 
action  at  law,  wherein  the  declaration  alleges  infringement 
before  June  22,  1874,  of  a  patent  which  expired  more  than 
six  years  before  the  beginning  of  the  action,  and  wherein  a 
plea  sets  up  the  national  statute  of  limitation,  and  wherein 
the  replication  alleges  disability  of  the  plaintiff.  Such  a  de- 
murrer will  result  in  a  judgment  for  the  defendant,  because 
disability  is  not  a  legal  excuse  for  delay  to  sue,  in  respect  of 
the  national  statute  of  limitation. 

§  486.  A  joinder  in  demurrer  is  the  proper  response  to  such 
a  pleading  in  a  patent  action,  as  well  as  any  other.  If  a  plain- 
tiff attempts  to  demur  to  a  demurrer,  or  refuses  to  join  issue  of 
law  upon  it,  he  thereby  discontinues  his  action,  and  if  a  de- 
fendant does  so  he  discontinues  his  defence.' 

§  487.  The  trial  of  an  action  at  law  for  infringement  of  a 
patent  may  be  by  a  jury,  or  by  a  judge,  or  by  a  referee.  Tho 


1  Sections  440  to  477  of  this  book.  3  Gould's     Pleadings,   Chap.    IX. 

1  1  Chitty  on  Pleading,  546.-  Sec.  33  ;  1  Chitty  on  Pleading,  CG'J. 


CHAP.   XVIII.]  ACTIONS    AT    LAW.  347 

first  of  these  sorts  of  trial  is  the  only  proper  one,  except  in 
cases  where  both  parties  agree  to  substitute  one  of  the  others. 
Cases  of  the  kind  may  be  tried  by  the  judge  where  the  parties 
file  with  the  clerk,  a  stipulation  in  writing  waiving  a  jury  ; ' 
and  trial  by  a  referee  appointed  by  the  court,  with  the  consent 
of  both  parties,  is  a  mode  of  trial  fully  warranted  by  law.4 

§  488.  Trial  by  jury  must,  in  the  absence  of  contrary  con- 
sent by  the  parties,  be  by  a  jury  of  twelve  men.  Unanimity 
is  necessary  to  a  verdict  of  a  jury,  in  a  Federal  court,  even  in 
California  or  Nevada  ;  though  the  statutes  of  those  States 
provide,  that  in  their  courts,  a  legal  verdict  may  be  found 
when  three  fourths  of  the  members  of  a  jury  agree.  The 
laws  of  those  States  on  that  point  are  not  covered  by  Section 
721  of  the  Revised  Statutes,  and  so  made  rules  of  decision  in 
Federal  courts  ;  because  the  Federal  Constitution  otherwise 
provides.  That  provision  is  found  in  its  seventh  amendment, 
and  in  the  following  language  :  "In  suits  at  common  law, 
where  the  value  in  controversy  shall  exceed  twenty  dollars, 
the  right  of  trial  by  jury  shall  be  preserved. "  It  is  true  that 
unanimity  was  not  necessary  to  the  verdicts  of  juries  in 
England  till  after  the  reign  of  Edward  the  First,3  and  that  it 
was  never  required  in  Scotland.4  But  the  kind  of  "  trial  by 
jury,"  known  in  England  and  in  the  United  States  when  the 
seventh  amendment  was  proposed  by  Congress,5  and  when  it 
was  ratified  by  three  fourths  of  the  States,8  is  doubtless  the 
kind  of  trial  guaranteed  by  that  amendment.  Therefore  no 
law  providing  for  any  other  kind  of  trial  by  jury  can  be  en- 
forced in  a  United  States  court. 

§  489.  The  practice  in  actions  at  law  in  the  Federal  courts 
is  not  uniform  throughout  the  United  States.  There  are  no 
general  rules  governing  the  Circuit  Courts  when  sitting  as  law 
courts,  though  there  is  such  a  system  prescribed  for  them 

1  Revised  Statutes,  Section  649.  4  Barririgton  on  the  Statutes,  Chap. 

9  Heokers   v.   Fowler,   2   Wallace,  29,  p.   20  ;  17  &  18  Victoria,   Chap. 

123,  1864.  59  ;  22  &  23  Victoria,  Chap.  7  ;  31  & 

3  Bracton,   Liber  IV.     Chap.    19  ;  32  Victoria,  Chap.  100,  Sec.  48. 

Fleta,  Liber  IV.  Chap.  9  j  Britton,  &  September  25,  1789. 

Liber  II.  Chap.  21.  «  November  3,  1791. 


343  ACTIONS    AT   LAW.  [CHAP.   XVIII. 

when  sitting  in  equity.  On  the  law  side,  each  Circuit  Court 
is  governed,  in  matters  of  practice,  by  the  laws  of  the  State  in 
which  it  is  established,  so  far  as  those  laws  are  applicable  ;  ' 
and  on  points  where  no  law  exists,  it  is  governed  by  rules  or 
customs  of  its  own  making  or  observance.  No  Act  of  Con- 
gress is  necessary  to  enable  United  States  courts  to  make  and 
enforce  its  own  rules  of  practice.  It  is  only  necessary  that 
such  rules  be  not  repugnant  to  the  laws  of  the  United  States.3 

§  490.  The  rules  of  evidence  which  are  used  in  the  trial  of 
patent  causes,  are  the  ordinary  rules  of  the  common  law,  as 
modified  by  the  statutes  of  the  particular  States  in  which  such 
trials  occur,3  and  as  adapted  to  the  circumstances  of  patent 
litigation  by  the  decisions  of  the  United  States  courts. 

§  491.  Evidence  to  support  his  declaration,  must  of  course 
be  introduced  by  a  plaintiff  in  a  patent  suit,  before  the  defend- 
ant can  be  called  upon  to  prove  any  defence.  The  first  item 
of  such  evidence  consists  of  the  letters  patent  sued  upon,  or 
of  a  written  or  printed  copy  of  the  same  authenticated  by  the 
seal  and  certified  by  the  Commissioner  or  the  Acting  Commis- 
sioner of  the  Patent  Office.4  Either  the  letters  patent,  or 
such  a  copy  thereof,  is  prima  facie  evidence  of  the  validity 
of  the  letters  patent,  unless  it  appears  on  its  face  not  to  be 
such  a  form  of  document  as  the  statute  prescribes.  Some  of 
the  adjudicated  cases  which  touch  this  subject,  apply  the  rule 
to  novelty  only,  and  not  to  validity  in  general.5  The  reason 
of  the  rule,  as  far  as  it  relates  to  novelty,  is  twofold.  A  pre- 
sumption of  novelty  arises  from  the  inventor's  statutory  oath 
that  he  verily  believes  himself  to  be  the  first  and  original 
inventor ;  *  and  a  like  presumption  arises  from  the  fact 
that  the  Commissioner,  before  he  grants  a  patent,  is  bound 
to  cause  an  examination  to  be  made  of  the  alleged  new  inven- 

1  Revised  Statutes,  Section  914.  4  Revised  Statutes,  Section  892. 

s  Heckers    v.    Fowler,  2  Wallace,  B  Blanchard  v.  Putnam,  8  Wallace, 

123,  1864.  420,  1869  ;  .Seymour  v.  Osborne,   11 

3  Vance  v.  Campbell,  1  Black,  427,  Wallace,     516,     1870  ;     Mitchell     u. 

1861  ;   Haussknecht  v.    Claypool,   1  Tilghman,  19  Wallace,  287,  1873. 

Black,  431,   1861  ;  Wright  v.  Bales,  •  Revised  Statutes,  Section  4892. 
2  Black,  535,  1862. 


CHAP.   XVIII.]  ACTIONS    AT    LAW.  349 

tion  ;l  which  examination,  in  practice,  includes  all  relevant  prior 
patents  and  printed  publications,  of  which  the  Patent  Office 
contains  any  evidence.  Now  the  first  of  these  grounds  of 
presumption  does  not  exist  in  regard  to  any  quality  of  validity 
except  novelty,  and  except  regularity  in  point  of  sole  or  joint 
application  for  a  patent  for  a  sole  or  joint  invention.  The 
second  ground  is,  however,  a  much  stronger  foundation  for  a 
presumption  of  validity  in  other  respects,  than  it  is  for  a  pre- 
sumption of  novelty.  The  Commissioner  of  Patents  has  no 
means  of  determining  how  the  novelty  of  an  invention  may  be 
affected  by  things  of  which  the  Patent  Office  contains  no 
record,  and  of  which  his  own  narrow  experience  contains  no 
recollection.  If  he  understands  the  law,  he  has,  on  the  con- 
trary, every  means  of  deciding  whether  a  particular  application 
for  a  patent  covers  a  statutory  subject  of  such  a  grant.  So 
also  he  can  pass  upon  the  application  in  point  of  invention, 
with  more  certainty  than  he  can  pass  upon  it,  in  point 
of  novelty.  He  has  nearly  every  means  to  determine  the 
utility  of -the  thing  covered  thereby,  and  thus  to  negative  the  ' 
fourth  defence.  It  is  clear  that  no  outside  evidence  need  be 
introduced  by  a  plaintiff,  to  anticipate  either  the  fifth  or  the 
sixth  defence,  because  the  law  does  not  favor  an  abandon- 
ment, and  throws  upon  a  party  who  seeks  to  obtain  the  benefit 
of  a  forfeiture,  the  burden  of  proving  it  beyond  a  reasonable 
doubt.5  Letters  patent  are  therefore  primafade  evidence  of 
their  own  validity,  as  against  either  of  these  defences.  The 
same  thing  is  true  of  the  seventh  defence,  though  for  a  differ- 
ent reason.  If  a  patent  is  obnoxious  to  this  defence,  it  is  be- 
cause the  Commissioner  of  Patents  made  an  error  in  granting 
it,  similar  to  that  which  he  makes  when  he  grants  a  reissue 
for  a  different  invention  from  any  indicated,  suggested  or  de- 
scribed in  the  original.  But  there  is  always  a  presumption  of 
law  against  the  hypothesis  of  such  an  error  ;  and  that  presump- 
tion prevails  until  such  an  error  is  proved.3  The  fact  that 
the  statute  expressly  provides  a  particular  method,  in  which 

1  Revised  Statutes,  Section  4893.  8  Seymour  v.  Osborne,  11  Wallace, 

1  McCormick  v.  Seymour,  2  Blatch.       516,  1870. 
256,  1851. 


350  ACTIONS    AT    LAW.  [CHAP.   XVin. 

the  eighth  defence  may  be  interposed  bj  a  defendant,1  suf- 
ficiently shows,  that  until  it  is  set  up  and  proved,  the  plaintiff 
need  not  attempt  to  disprove  it,  further  than  by  the  introduc- 
tion of  his  letters  patent.  As  against  the  ninth  and  tenth 
defences,  the  letters  patent  are  also  sufficient  prima  facie 
evidence  ;  because  both  those  defences  are  contradicted  by 
the  inventor's  oath  accompanying  the  application,  even  more 
positively  than  want  of  novelty  is  contradicted  by  that  oath." 
No  inventor  can  positively  know  whether  his  invention  is 
absolutely  novel,  and  therefore  his  oath  covers  only  his  belief 
on  that  point  ;  but  every  inventor  knows  the  facts  relevant  to 
whether  he  was  the  sole  inventor,  or  only  a  joint  inventor,  of 
the  process  or  thing  covered  by  his  application.  Letters  pat- 
ent appear  to  be  prima  facie  evidence  of  their  own  validity, 
as  against  the  eleventh  defence,  for  the  same  reason  which 
makes  them  so  as  against  the  eighth.  Relevant  to  the 
twelfth  and  thirteenth  defences,  the  Commissioner's  decision 
in  granting  a  patent,  is  entitled  to  far  more  weight  than  it  is 
on  the  question  of  novelty,  because  he  has  all  the  data  for 
forming  an  opinion  about  the  fulness  and  clearness  of  a  writ- 
ten document  before  him,  but  not  all  the  data  for  an  opinion 
touching  the  novelty  of  what  that  document  sets  forth.  It 
follows  that  the  resulting  presumption  of  validity,  in  respect 
of  these  defences,  is  even  stronger  than  the  presumption  of 
novelty.  The  fourteenth  defence  is  based  on  partial  want  of 
novelty,  and  as  letters  patent  are  undoubtedly  prima  facie 
evidence  of  entire  novelty,  it  follows  that  they  constitute 
prima  facie  evidence  that  no  disclaimer  is  needed.  The 
conclusion  of  the  whole  matter,  therefore,  is  that  an  original 
letters  patent  is  prima  facie  evidence  of  its  own  entire 
validity.' 

§  492.  Reissue  letters  patent  are  also  prima  facie  evidence  of 
their  own  validity,  on  all  of  the  three  points  which  are  in- 
volved in  that  question.  They  are  so  in  respect  of  the  fifteenth 
defence  ;  because  the  fact  that  the  Commissioner  assumed 

1  Bevised  Statutes,  Section  4920.  *  Konold  v.  Klein,  3  Bsnn.  A  Ard., 

*  Bevised  Statutes,  Section  4892.         226,  1878. 


CHAP.   XVlII.]  ACTIONS    AT    LAW.  351 

* 

jurisdiction,  by  treating  the  original  letters  patent  as  a  proper 
subject  for  a  reissue,  is  at  least  prima  facie  evidence  that  he 
had  jurisdiction.1  They  are  so  in  respect  of  the  sixteenth 
defence  ;  because  the  presumption  is  that  the  Commissioner 
knew  the  law,  and,  knowing  it,  would  not  grant  a  broadened 
reissue  after  a  long  lapse  of  time  from  the  date  of  the  original. 
They  are  so  in  respect  of  the  seventeenth  defence,  because 
the  presumption  is  that  the  Commissioner  would  not  violate 
the  statute  by  granting  a  reissue  for  a  different  invention  from 
that  shown  in  the  original  letters  patent.2 

§  493.  An  extension  of  a  patent  is  prima  facie  evidence  of 
its  own  validity  as  against  the  eighteenth  defence,  on  the  same 
ground  that  a  reissue  is,  as  against  the  fifteenth.  That  ground 
is  the  presumption  that  the  Commissioner  of  Patents  will  not 
assume  jurisdiction  in  any  case  not  provided  for  by  law.3 

§  494.  It  is  an  undoubted  presumption  of  law,  that  letters 
patent,  which  appear  on  their  face  to  be  in  full  force,  are  so 
in  fact.  Such  a  document  is  therefore  prima  facie  evidence 
that  it  neither  has  been  repealed  by  a  decree  of  court,  nor  has 
expired  because  of  the  expiration  of  some  foreign  patent  for 
the  same  invention.  It  follows  that  neither  the  nineteenth  or 
twentieth  defence  need  be  anticipated  by  a  plaintiff,  when 
introducing  his  prima  facie  evidence. 

§  495.  After  introducing  the  letters  patent  in  evidence, 
unless  the  plaintiff  is  himself  the  patentee,  his  next  step  is  to 
prove  his  title  to  the  right,  upon  the  infringement  of  which 
the  action  is  based.  To  this  end  he  must  prove  himself  to  be 
the  assignee  of  the  patent  ;  or  at  least  a  grantee  under  the 
patent,  as  to  the  territory  wherein  the  alleged  infringement 
occurred.  He  may  do  either  of  these  things,  by  introducing 
in  evidence  the  original  assignments  or  grants  which  constitute 
his  chain  of  title,  after  having  proved  them  according  to  the 
rules  of  the  common  law.  It  has  also  been  repeatedly  decided 
by  Circuit  Courts,  that  duly  certified  copies  of  the  Patent 

1  Brooks  v.   Bicknell,    3  McLean,       1873. 

258,  1843.  a  Brooks  v.  Bicknell,    3   McLean, 

!  Klein  v.  Russell,  19  Wallace,  433,       258,  1843. 


352  ACTIONS   AT   LAW.  [CHAP.   XVIII. 

Office  records  of  such  assignments  or  grants,  are  competent 
primary  evidence  of  the  original  documents  themselves.1 
These  three  decisions  have  been  generally  acquiesced  in  for 
more  than  twenty  years,  and  few  rules  of  patent  law  have  been 
more  frequently  made  the  basis  of  action  by  counsel  and  by 
courts  than  the  doctrine  just  mentioned.  But  it  hardly  seems 
justified  by  the  statute  upon  which  it  is  based,"  and  may  even 
yet  be  overthrown  by  the  Supreme  Court. 

§  496.  It  is  not  necessary  for  any  plaintiff  to  prove  in  his 
prima  facie  evidence  that  the  defendant  has  no  license  or 
release  with  which  to  defend  ; 3  nor  can  it  be  required  of  him 
to  testify  that  he  never  made  or  sold  any  specimen  of  the  in- 
vention without  marking  it  "  patented. "  Evidence  relevant  to 
the  twenty-first,  twenty-third,  and  twenty-fourth  defences, 
must  therefore  be  taken  by  the  defendant,  before  the  plaintiff 
can  be  called  upon  to  disprove  them. 

§  497.  Proof  of  the  making,  selling,  or  using,  by  the  defend- 
ant, of  a  specimen  or  specimens  of  a  processor  thing  which  the 
plaintiif  claims  is  covered  by  his  patent,  constitutes  the  next 
step  to  be  taken  in  proving  a  prima  facie  case.  This  point 
is  often  covered  by  a  stipulation  of  the  parties.  Defendants 
are  generally  wise  when  they  make  such  stipulations,  because 
any  attempts  to  conceal  the  nature  of  their  doings,  are  likely 
to  prejudice  the  welfare  of  their  defences.  But  in  cases  where 
the  defendants  have  no  refuge  but  concealment,  the  point  of 
proof  may  be  one  of  difficulty,  for  courts  of  law  have  no  power 
to  order  inspections  of  a  defendant's  works  ;  *  though  the 
defendant  may  be  called  as  a  witness,  and  compelled  to  describe 
what  he  has  done.5  Where  a  defendant  cannot  be  relied  upon 
to  testify  fairly  and  fully,  the  plaintiff  must  secure  other 
evidence  ;  for  it  is  necessary  to  a  verdict  in  an  action  at  law 

1  Brooks  v.    Jenkins,    3   McLean,  Sec.  4,  p.  118. 

436,    1844  ;    Purker   r.    Haworth,    4  3  Fischer  v.  Hayes,  6  Fed.  Rep.  79, 

McLean,  370,  1848  ;  Lee  v.  Blandy,  1881. 
2  Fisher,  91,  1860.  *  Parker  v.  Bigler,   1  Fisher,  287, 

s  Revised   Statutes,   Sec.    892  ;  16  1857. 

Statutes  at  Large,  Ch.  230,  Sec.   57,  5  Roberts  v.  Walley,  14  Fed.  Rep., 

p.  207  ;  5  Statutes  at  Large,  Ch.  357,  1G9,  1882. 


6HAP.  XVIII.]  ACTIONS    AT   LAW.  353 

for  an  infringement  of  a  patent,  that  both  the  nature  and  the 
extent  of  that  infringement  be  shown  to  the  jury,  by  satis- 
factory proof.  Evidence  of  the  nature  of  a  defendant's 
doings,  is  the  first  element  of  evidence  of  infringement  ;  and 
evidence  of  their  extent,  is  an  indispensable  part  of  the  neces- 
sary evidence  of  damages. 

§  498.  Evidence  of  infringement  is  completed  with  evidence 
of  the  defendant's  doings,  if  what  he  did  was  obviously  and 
unquestionably  identical  with  what  is  covered  by  the  patent  in 
suit.1  But  that  is  not  often  the  case.  Differences  are  generally 
apparent  ;  and  where  they  are  not  obviously  immaterial,  it  is 
necessary  to  introduce  expert  testimony  to  show  that  they  are 
really  of  tiiat  character,  and  to  show  that  the  defendant's 
doings  actually  did  constitute  an  infringement  of  the  plaintiff's 
patent.  Experts  in  patent  cases  are  mainly  of  two  kinds  : 
mechanical  and  chemical  experts.  A  mechanical  expert  is  a 
person  who  has  extensive  theoretical  and  practical  knowledge 
of  mechanics  ;  and  a  chemical  expert  is  a  person  who  has  like 
knowledge  of  chemistry.  The  opinions  of  such  experts  are 
admissible  upon  the  points  of  fact  to  which  they  are  relevant  ; 
but  in  order  to  have  much  weight,  they  must  be  accompanied 
by  statements  of  good  reasons  upon  which  they  are  based." 
In  deciding  between  contradictory  expert  testimony,  juries 
should  consider  the  respective  reasons,  ability,  knowledge,  and 
fairness  of  the  experts.3  To  judge  according  to  their  number 
or  their  fame  would  be  unsafe.  The  wealthier  litigants  are 
generally  those  who  employ  the  more  numerous  and  the  more 

1  Jennings  v.  Kibbe,  10  Fed.  Rep.,  298,  1857  ;  Carter  v.  Baker,  1  Saw- 

669,  1882  ;  Barrett  v.  Hall,  1  Mason,  yer,  512,  1871  ;  Spaulding  v.  Tucker,, 

471,  1818.  Deady,  649,  1869  ;  Gaboon  v.  Ring, 

*  United  States  Annunciator  Co.  1  Clif.  592,  1861  ;  Cox  r.  Griggs,  1 

v.  Sanderson,  3  Blatch.  184,  1854  ;  Bissell,  362,  1861  ;  Conover  v.  Roach, 

Livingston  v.  Jones,  1  Fisher,  521,  4  Fisher,  12,  1857  ;  Whipple  v.  Mfg. 

1859  ;  Conover  v.  Rapp,  4  Fisher,  Co.  4  Fisher,  29,  1858  ;  Conover  v. 

67,  1859.  Rapp,  4  Fisher,  57,  1859  ;  Water- 

3  Johnson  v.  Root,  1  Fisher,  351,  bury  Brass  Co.  v.  New  York  Brass 

1858  ;  Many  v.  Sizer,  1  Fisher,  17,  Co.  3  Fisher,  43,  1858  ;  Bierce  v. 

1849  ;  Hudson  r.  Draper,  4  Fisher,  Stocking,  11  Gray  (Mass.)  174,  1853. 
256,  1870  ;  Page  v.  Ferry,  1  Fisher, 


354:  ACTIONS   AT   LAW.  [CHAP.   XVIH. 

expensive  expert  witnesses  ;  but  it  is  not  always  the  wealthier 
litigant  who  is  right  in  a  controversy,  nor  always  the  more 
famous  expert  who  is  right  in  his  opinion.  The  carefully 
digested  views  of  a  young  and  studious  scientist,  may  often  be 
more  nearly  true  than  the  more  hastily  formed  opinion  of  a 
more  experienced  man. 

§  499.  No  expert  can  know  whether  a  particular  thing,  done 
or  made  by  a  defendant,  is  the  same  as  any  thing  covered  by  a 
particular  patent,  until  he  ascertains  what  that  patent  covers. 
But  the  latter  questjon  is  one  of  construction  for  the  court, 
and  not  a  question  of  evidence,  to  be  sworn  to  by  an  expert, 
and  decided  by  the  jury.  In  the  regular  course  of  proceedings 
in  trials  at  la,w,  as  well  as  in  hearings  in  equity,  the  construc- 
tion of  the  patent  is  not  announced  by  the  judge  till  after  the 
evidence  is  taken.  This  practice  makes  it  proper  to  put 
hypothetical  questions  to  expert  witnesses.  The  hypothesis 
in  such  a  question,  is  one  which  embodies  that  construction  of 
the  patent  upon  which  the  examining  counsel  thinks  it  both 
safe  and  sufficient  to  rely.  If,  when  charging  the  jury,  the 
judge  gives  a  different  construction  from  that  embodied  in  the 
hypothetical  question,  then  the  answer  to  that  question  will  be 
seen  to  be  immaterial,  and  the  jury  will  do  right  to  disregard 
it.  Examining  counsel  ought  therefore  to  be  very  certain  that 
his  hypothetical  construction  is  the  true  one  ;  or  otherwise,  to 
put  as  many  hypothetical  questions  as  there  are  probable  favor- 
able constructions.  Doing  the  latter,  he  may  have  a  favorable 
answer  upon  which  to  argue  to  the  jury,  if  he  secures  from 
the  judge  a  construction  which  corresponds  with  either  of  his 
hypothetical  questions.  A  statement  of  a  witness,  that  a 
particular  thing  does  or  does  not  infringe  a  particular  patent, 
is  inadmissible  in  evidence  ;  because  that  statement  includes  a 
construction  of  the  patent,  and  construction  of  patents  is  the 
duty  of  courts,  and  not  of  experts. 

§  500.  Though  not  permitted  to  testify  to  the  construction 
of  a  patent,'  experts  are  sometimes  called  upon  to  testify  to 
facts  which  positively  control  that  construction.  The  follow- 

1  Waterbury  Brass  Co.  v.  New  York  Brass  Co.  3  Fisher,  54,  1858. 


CHAI>.   XVIII.]  ACTIONS    AT   LAW.  355 

ing  are  examples  of  such  cases.  Where  the  state  of  the  art 
is  the  subject  of  inconsistent  evidence,  and  where  the  construc- 
tion of  the  patent  depends  on  what  is  the  fact  in  that  regard  ; 
the  judge  will  not  charge  the  jury  that  the  patent  means  thus 
and  so,  but  will  tell  them  that  if  they  find  the  state  of  the  art 
to  be  so  and  so,  then  the  patent  is  entitled  to  such  and  such  a 
construction.1  In  cases  of  this  kind,  it  will  frequently  occur 
that  the  jury,  in  deciding  upon  the  state  of  the  art,  must  re- 
ceive information  from  experts  relevant  to  the  mechanical 
nature  of  prior  things,  as  well  as  information  from  other 
sources  relevant  to  the  prior  existence  of  those  things.  All 
questions  of  identity  of  things  are  questions  for  the  jury,  in  an 
action  at  law/  and  are  therefore  proper  to  be  testified  about 
by  experts.  Where  a  patent  covers  such  of  the  things  de- 
scribed, as  perform  a  particular  function,  it  is  the  business  of 
the  jury  to  decide,  and  therefore  proper  for  an  expert  to 
testify,  which  those  things  are.3 

§  501.  The  cross-examination  of  experts,  cannot  extend  to 
inquiries  into  the  characteristics  of  things  not  relevant  to  the 
case,  put  to  them  for  the  purpose  of  testing  their  knowledge  or 
their  fairness  ;  because  if  the  answers  appeared  to  be  undeni- 
ably correct,  they  would  be  wholly  immaterial,  and  if  thought 
to  be  erroneous  they  could  be  shown  to  be  so,  only  by  the 
testimony  of  others,  who  might  themselves  be  the  mistaken 
ones.  To  allow  such  a  question,  would  thus  operate  to  intro- 
duce an  immaterial  issue  of  fact  into  a  case,  and  to  draw  the 
attention  of  the  jury  away  from  the  issues  of  the  pleadings.4 

§  502.  The  last  part  of  a  plaintiff's  prima  facie  evidence, 
consists  in  proof  of  the  amount  of  his  damages,  sometimes 
supplemented  by  evidence  tending  to  show  that  a  judgment 
ought  to  be  entered  for  an  amount  greater  than  the  actual 
damages  sustained  by  him.5  The  subject  is  mentioned  in  this 
connection  for  the  sake  of  symmetry  ;  but  it  is  so  large  that 

1  Bnrdell  v.  Denig,    92  U.  S.  722,       1852. 

4  Odiorne  v.  Winkley,  2  Gallison, 
s  Tyler  v.  Boston,  7  Wallace,  327,  51,  1814. 

8  Bevised  Statutes,  Section  4919. 
8  Silsby  v.  Foote,  14  Howard,  218, 


356  ACTIONS    AT   LAW.  [CHAP.   XVIII. 

it  constitutes  the  theme  of  a  separate  chapter  of  this  book.  To 
that  chapter,  recourse  may  be  had  for  detailed  information 
upon  the  point. 

§  503.  The  next  part  of  a  trial  is  the  introduction  of 
evidence  by  the  defendant  to  sustain  his  defences.  The  pos- 
sible defences  in  patent  cases  are  twenty-seven  in  number. 
In  prior  sections  in  this  chapter,  they  are  consecutively  num- 
bered for  purposes  of  easy  reference,  and  are  treated  in  respect 
of  the  pleadings  which  they  respectively  require,  and  the  re- 
sults which  they  respectively  produce  in  patent  actions  at  law. 
It  is  now  convenient  to  set  forth,  in  the  same  order,  some  of 
the  leading  points  of  the  law  of  evidence  applicable  to  each. 

§  504.  The  first  defence  generally  requires  evidence  to  show 
that  the  terms  of  art  or  science  which  are  used  in  the  patent 
have  such  a  meaning  that  the  court  is  bound  to  construe  the 
patent  to  be  one  for  a  principle,  or  for  something  other  than 
a  process,  machine,  manufacture,  composition  of  matter,  or 
design.  This  general  statement  is  ventured,  though  the  cases 
in  which  patents  have  been  assailed  with  the  first  defence  are 
so  few,  that  but  little  law  is  established  on  the  subject. 

§  505.  The  second  defence  may  sometimes  be  supported  by 
facts  of  which  the  court  will  take  judicial  notice.1  But 
evidence  to  show  the  state  of  the  art,  is  often  required  to  show 
want  of  invention.  A  patent  granted  for  an  implement  of 
agriculture,  consisting  of  a  hoe  handle  with  a  hoe  on  one  end 
and  a  rake  on  the  other,  would  be  void  for  want  of  invention, 
even  if  both  new  and  useful.2  The  court  would  take  judicial 
notice  of  the  prior  existence  of  handles  having  hoes  attached 
thereto,  and  of  other  like  handles  having  rakes  fastened  at  one 
end  ;  and  on  the  basis  of  that  judicial  notice,  would  pronounce 
such  a  patent  to  be  wholly  invalid.  A  patent  for  a  particular 
alleged  combination,  in  a  rare  and  complicated  machine,  may 
also  be  open  to  precisely  the  same  sort  of  objection  ;  while  the 
facts  upon  which  it  rests  in  the  particular  case,  may  be  wholly 


1  Brown    v.  Piper,  91    U.   S.  37,  *  Reckendorfer  v.  Faber,  92  U.  8. 

1875  ;  Slawson    v.  Railroad  Co.  107       347,  1875. 
U.  S.  649, 1882. 


CHAP.  XVIII.]  ACTIONS    AT   LAW.  357 

unknown  to  people  generally,  and  wholly  unknown  to  judges 
who  hear  patent  causes,  though  well  understood  by  certain 
classes  of  mechanics.  In  the  latter  case,  it  is  necessary  to  in- 
troduce evidence  of  those  facts  in  order  to  show  want  of  in- 
vention. Such  evidence  may  consist  of  proof  of  the  prior 
existence  of  the  parts  of  the  alleged  combination,  and  proof 
of  the  fact  that  their  union  in  the  machine  constitutes  not  a 
real  combination,  but  an  aggregation  only.  This  statement  of 
the  considerations  which  show  a  necessity  for  evidence  to  prove 
lack  of  invention,  when  that  lack  is  based  on  the  rule  that 
aggregation  is  not  invention,  will  also  furnish  the  key  to  in- 
quiry when  that  lack  is  based  on  any  other  of  the  various 
rules  on  that  subject. 

§  506.  The  third  defence,  and  the  facts  which  support  it, 
are  explained  at  large  in  the  third  chapter  of  this  book.  In 
this  connection,  it  is  only  necessary  to  explain  the  kinds  of 
evidence  by  which  those  facts  may  be  proven,  and  to  state  the 
special  rules  which  govern  the  weight  of  such  evidence. 

Where  novelty  is  duly  sought  to  be  negatived  by  prior 
United  States  patents,  duly  certified  copies  of  those  patents 
are  admissible  ; '  and  it  is  a  general  practice  among  patent 
lawyers  to  waive  the  certificate,  where  a  printed  copy  from  the 
Patent  Office  is  presented  by  opposing  counsel.  Such  printed 
copies  are  really  more  reliable  than  any  certified  manuscript 
copy  ;  because  they  are  generally  printed  from  the  same  form 
as  the  original  letters  patent,  and  are  therefore  absolutely  cor- 
rect ;  while  there  is  always  a  possibility  of  error  in  copying 
a  document  with  a  pen.  But  the  Patent  Office  does  not  fur- 
nish printed  copies  «of  patents  which  were  granted  prior  to 
1866  ;  and  as  to  those  patents,  a  certified  manuscript  copy  is 
the  best  to  be  had.  The  certified  copies  of  letters  patent, 
which  are  admissible  in  evidence,  include  not  only  such  in- 
dividual copies  as  are  furnished  to  private  persons  on  payment 
of  the  proper  fees  ;  but  also  the  certified  bound  volumes  of 
copies,  which  are  gratuitously  distributed  by  the  Commissioner 
of  Patents  to  all  the  State  and  Territorial  capitols,  and  to  all 

1  Kevised  Statutes,  Sec.  892. 


358  ACTIONS   AT   LAW.  [CHAP.  XVIIL 

the  United  States  District  Court  clerk's  offices,  except  those 
which  are  located  at  the  capitals  of  the  States  and  Territories.1 

Where  prior  foreign  patents  are  duly  pleaded  to  negative 
novelty,  they  may  be  proven  prima  facie,  by  duly  certified 
copies  of  those  copies  thereof,  which  are  kept  in  the  United 
States  Patent  Office.4  If  plenary  proof  of  foreign  letters  pat- 
ent is  required,  it  can  be  made  by  producing  a  copy  thereof, 
duly  certified  by  that  officer  of  the  foreign  government  which 
issued  the  patent,  who  corresponds  to  the  Commissioner  of 
Patents  in  the  United  States.3  Where  an  error  creeps  into  a 
certified  copy  of  any  letters  patent,  it  may  be  corrected  by 
another  and  more  carefully  compared  certified  copy  from  the 
same  office.4  Letters  patent,  to  be  admissible,  must  agree  in 
name  and  date  with  the  statements  in  the  pleadings,  in  proof 
of  which  they  are  offered.5 

§  507.  Prior  printed  publications  must  be  proven  by  the  in- 
troduction of  a  specimen  of  the  printed  thing  which  is  relied 
upon,  and  by  satisfactory  evidence  that  it  was  published  be- 
fore the  date  of  the  patent  in  suit.  Parol  testimony  of  the 
contents  of  such  printed  matter  is  generally  inadmissible.' 
The  testimony  of  a  person,  that  the  printed  thing  produced 
was  published  before  the  date  of  the  invention  in  suit,  if 
believed  by  the  jury,  would  be  sufficient  evidence  on  that 
point.  What  evidence  short  of  that  in  convincing  force, 
would  answer  the  purpose  in  hand,  has  not  been  judicially  set- 
tled. Printed  publications  are  not  generally  evidence  of  the 
truth  of  the  statements  which  they  contain.7  But  where  a 
book  or  public  periodical  appears  to  have  been  published  in  a 
specified  year,  or  on  a  specified  day,  and  where  it  contains 
matter  which  furnishes  collateral  evidence  of  the  genuineness 
of  the  date,  and  where  it  is  free  from  the  suspicion  of  having 
been  changed  after  it  was  put  forth,  it  will  probably  be  re- 

1  Revised  Statutes,  Sec.  490.  5  Bellas    v.    Hays,  5    Sergeant  <fc 

8  Revised  Statutes,  Sec.  893.  Rawle  (Penn.)  427,  1819. 

3  Schoerken  v.  Swift  <fc  Courtney  <fe  *  McMahon    v.   Tyng,    14     Allen 
Beecher  Co.  7  Fed.  Rep.,  469.  1881.  (Mass.)  167,  1867. 

4  Brooks  v.   Jenkins,   3  McLean,  7  Seymour  v.  McConnick,  19  How- 
432,  1844.  ard,  106,  1856. 


CHAP,  XVIII.]  ACTIONS   AT  LAW.  359 

ceived  in  evidence,  without  direct  testimony  that  it  was  pub- 
lished when  it  purports  to  have  been. 

§  508.  Prior  knowledge  or  use  of  a  thing  patented,  may  be 
proven  by  the  testimony  of  the  person  or  persons  who  had  such 
prior  knowledge,  or  who  know  of  such  prior  use.  Such  tes- 
timony includes  three  points  :  the  existence,  the  character, 
and  the  date  of  the  thing  previously  known  or  used.  Where  a 
witness  relies  wholly  on  his  memory  for  all  three  of  these 
points,  his  testimony,  though  admissible,  is  not  strong.  It  is 
generally  impossible  to  remember  with  certainty  the  particular 
construction  of  a  thing  of  which  no  specimen  is  known  to 
remain  in  existence  ;  and  most  memories  are  wholly  unreliable 
on  bare  questions  of  dates.  It  is  therefore  desirable  to  fortify 
testimony  of  prior  knowledge  or  use  by  producing  the  antici- 
pating thing,  or  a  specimen  thereof,  and  by  connecting  the 
history  of  that  thing  with  events  about  which  there  is  no  room 
for  doubt.  Where  the  anticipating  thing  cannot  be  produced, 
the  testimony  which  supports  its  prior  existence,  may  still  pre- 
vail, if  the  construction  of  the  article  was  so  simple,  and  so 
well  understood,  as  to  be  unlikely  to  be  forgotten,  and 
especially  if  a  number  of  credible  witnesses  agree  in  regard  to 
its  character  and  its  date. 

§  509.  Parol  evidence  of  an  anticipating  thing,  is  likely  to 
be  met  by  other  parol  evidence,  tending  to  show  that  such  a 
thing  never  existed  at  the  place  alleged  ;  or  that  it  was  sub- 
stantially different  from  the  patented  invention  sought  to  be 
anticipated  ;  or  that  it  did  not  exist  at  the  alleged  place  till 
after  the  date  of  the  patented  invention.  Testimony  of  the 
first  sort  is  negative  in  its  character,  and  therefore  not  so 
weighty  as  the  affirmative  evidence  which  it  contradicts.1  But 
it  does  not  need  to  be  so  weighty,  in  order  to  overthrow  the 
latter,  for  a  mere  preponderance  of  evidence  will  not  sustain 
the  defence  of  want  of  novelty.  That  defence,  in  order  to 
prevail,  must  be  proven  beyond  a  reasonable  doubt."  Tes- 
timony of  an  anticipating  thing  may  also  be  met  by  evidence 


1  Union  Sugar  Refinery  v.  Mat-          2  Section  76  of  this  book, 
thiessen,  2  Fisher,  600,  1865. 


360  ACTIONS    AT   LAW.  [CHAP.   XVIII. 

that  the  witness  purchased  a  license  under  the  patent ;  but 
such  answering  evidence  is  generally  entitled  to  very  little 
weight  ;  *  because  the  witness  may  not  have  understood  that 
the  facts  of  which  he  knew  constituted  a  legal  defence  to  the 
patent,  or  he  may  have  preferred  to  pay  for  a  license,  rather 
than  to  undergo  the  annoyance  and  incur  the  expense  which 
is  generally  incident  to  actions  for  infringement. 

§  510.  When  anticipating  matter  is  undeniably  proven  to 
have  existed  before  the  date  of  the  patent  in  suit ;  the  plaintiff 
may  sometimes  meet  that  evidence  by  proof  that  he,  or  his 
assignor,  made  the  invention  at  a  still  earlier  date.  He  may 
sometimes  do  this  by  means  of  a  certified  copy  of  the  specifi- 
cation and  drawings  of  his  original  application  ;  and  he  may 
sometimes  do  so  prima  facie,  by  means  of  a  like  copy  of  the 
original  petition  upon  which  the  letters  patent  were  granted  ; 
but  not  by  parol  evidence  relevant  to  the  time  when  that 
petition,  specification,  or  drawing  was  tiled."  If  his  application 
was  not  early  enough  for  the  purpose,  the  plaintiff  may  prove 
the  real  date  of  his  invention  by  proving  the  date  of  either 
of  those  facts,  which,  in  the  chapter  on  novelty,  were  shown 
to  constitute  the  birth  of  an  invention  thereafter  patented.8 

§  511.  The  fourth  defence  requires  evidence  that  the  pat- 
ented invention  will  not  perform  any  function  which  is 
ascribed  to  it  in  the  letters  patent ; 4  or  proof  that  its  function 
is  not  a  useful  one,  within  the  meaning  of  the  law  on  that 
subject.5 

The  first  of  these  sorts  of  proof  may  consist  of  testimony  of 
a  person  who  is  skillful  in  the  art  to  which  the  invention  per- 
tains, and  who  has  endeavored,  in  good  faith,  to  make  the 
patented  thing  work,  and  has  been  unable  to  do  so.  In  plain 
cases,  it  may  also  consist  of  the  testimony  of  such  a  person, 
who  has  not  actually  experimented  with  a  specimen  of  the 
patented  thing,  but  who  is  able  to  demonstrate  theoretically, 
that  it  is  impossible  for  such  a  specimen  to  operate.  And  in  all 

1  Evans  v.  Eaton,  3  Wheaton,  454,          8  Section  70  of  this  book. 
1818.  4  Bowe  v.  Blanchard  18  Wiscon- 

s  Wayne  v.  Winter,  6  McLean,  344,  sin,  462,  1864. 
1855.  *  Sections  82  to  84  of  this  book. 


CHAP.   XVIII.]  ACTIONS   AT   LAW.  361 

cases,  the  evidence  mast  show  a  total  incapacity  in  the  inven- 
tion to  do  anything  claimed  for  it,  because  neither  imperfect 
operation,  nor  a  total  failure  to  perform  part  of  the  claimed 
functions,  will  sustain  a  defence  of  want  of  utility.1  And 
either  practical  or  theoretical  evidence  of  want  of  utility  in 
the  sense  now  under  consideration,  may  be  overthrown  by  the 
testimony  of  a  person  who  has  succeeded  in  causing  the  pat- 
ented process  or  thing  to  produce  a  result  ascribed  to  it  in  the 
patent. 

The  second  of  these  sorts  of  proof  may  consist  of  evidence 
that  the  function  of  the  patented  thing  is  one  which  people 
generally  profess  to  condemn  as  dangerous  or  immoral.  Con- 
ventional and  not  absolute  ethics  is  the  criterion  of  judgment 
on  this  point.  Patents  for  revolvers  are  accordingly  sustained, 
though  it  cannot  reasonably  be  doubted  that  the  invention  of 
those  death-dealing  instruments  was  a  disaster  to  mankind. 

§  512.  The  fifth  defence  may  be  supported  by  any  com- 
petent evidence  which  shows' that  the  inventor  relinquished  all 
expectation  to  secure  a  patent,  before  his  patent  was  applied 
for,  or  after  it  was  applied  for  and  before  it  was  granted. 
Such  evidence  may  be  either  direct  or  circumstantial,  but  a 
mere  preponderance  of  evidence  cannot  sustain  this  defence  of 
actual  abandonment,  because  it  is  one  of  those  which,  in  order 
to  prevail,  must  be  proven  beyond  a  reasonable  doubt." 

§  513.  The  sixth  defence  requires  proof  that  the  patented 
thing  was  in  public  use  or  on  sale  at  a  date  more  than  two 
years  prior  to  that  upon  which  the  application  was  made  for 
the  patent.  Whether  it  is  necessary  to  prove  in  addition,  that 
the  public  use  or  sale  relied  upon,  occurred  with  the  consent 
of  the  inventor,  depends  upon  the  considerations  stated  in  that 
behalf  in  the  chapter  on  abandonment.* 

§  514.  The  seventh  defence  requires  the  introduction  of  the 
original  application  papers,  or  certified  copies  thereof  ;  and  in 
all  except  very  plain  cases,  it  requires  the  testimony  of  experts 
to  explain  the  outward  embodiment  of  the  terms  contained 

I  Seymour  v.  Marsh,  6  Fisher,  115,       256,  1851. 

1872.  s  Section  102  of  this  book. 

II  McCormick  v.  Seymour,  2  Blatch. 


ACTIONS    AT   LAW.  [CHAP.  XVIH. 

in  the  original  letters  patent,  and  in  the  original  application 
respectively. ' 

§  515.  The  eighth  defence  calls  for  evidence  that  another 
than  the  patentee  conceived  the  invention  before  he  did  ;  and 
that  the  other  used  reasonable  diligence  in  adapting  and  perfect- 
ing the  same  ;  and  that  the  patentee  knew  of  that  prior  concep- 
tion, and  obtained  the  patent  surreptitiously  ;  or,  if  he  did  not 
know  of  the  prior  conception,  that  he  obtained  the  patent 
unjustly,  by  obtaining  it  without  notice  to  the  prior  conceiver, 
though  the  latter  had  a  caveat  on  file  in.  the  Patent  Office  at 
the  time.8 

§  516.  The  ninth  defence  requires  proof  that  another  than 
the  patentee  was  joint  inventor  with  him  of  the  thing  covered 
by  the  patent.  Testimony  on  this  point  must  be  strong  in 
order  to  prevail,  because  the  tendency  of  courts  and  juries  is 
to  assign  such  evidence  to  the  category  of  mechanical  assistance 
in  construction,  or  to  that  of  suggested  substitution  of  equiva- 
lents.3 

§  517.  The  tenth  defence  is  more  likely  to  be  successful  in 
the  proof,  than  the  ninth  ;  because  it  may  not  only  be  based 
on  the  counterpart  of  the  circumstances  which  underlie  the 
latter,  but  also  on  other  circumstances,  where  those  do  not 
exist.  It  has  sometimes  happened  that  an  inventor,  having 
sold  an  undivided  half  interest  in  his  invention,  has  joined  with 
his  vendee  in  applying  as  joint  inventor  for  a  patent  there- 
for. Such  errors  have  been  known  to  result  from  ignorance 
of  the  law  ;  and  such  an  error  has  been  said  to  have  occurred 
in  one  case,  on  account  of  a  desire  to  give  an  important  patent 
the  benefit  of  the  name  of  a  more  distinguished  scientist  than 
he  who  was  the  real  producer  of  the  subject  of  the  claim. 
But  in  any  case,  it  is  certain  that  very  clear  and  unequivocal 
evidence  is  necessary  to  support  this  defence.4 

1  Bischoff  v.  Wethered,  9  Wallace,  *  Agawam  Co.  v.  Jordan,  7  Wallace, 

812,  1869.  587,   1868  ;    Pitts  v.  Hall,  2  Blatch. 

8  Kevised     Statutes,    Sec.    4920  ;  229,  1851. 

Agawam   Co.    v.   Jordan,  7  Wallace,  4  Gottfried  v.  Brewing  Co.  5  Bann. 

587,    1868  ;    Phelps    v.    Brown,    4  &  Ard.,  4,  1879. 
Blatch.  362,  1859. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  363 

§  518.  The  eleventh  defence  calls  for  proof  that  the  letters 
patent  contains  less  than  the  whole  truth  relevant  to  the  in- 
vention, or  that  it  contains  more  than  is  necessary  to  produce 
the  desired  result,  and  that  the  fault  arose  from  intention  to 
deceive  the  public.  But  positive  and  direct  evidence  is  not 
required  on  the  latter  point.  It  is  sufficiently  shown  by  proof 
of  any  circumstances  which  satisfy  the  jury  that  such  intention 
existed.1 

§  519.  The  twelfth  defence  can  be  supported  by  no  evidence 
except  that  of  persons  skilled  in  the  art  to  which  the  invention 
pertains,  or  with  which  it  is  most  nearly  connected.  A  patent 
for  a  chemical  composition  or  process  cannot  be  overthrown, 
on  the  ground  of  an  insufficient  description,  by  the  testimony 
of  a  mechanical  expert ;  nor  can  a  patent  for  an  improvement 
of  a  loom  be  overthrown,  on  that  ground,  by  the  testimony 
of  a  machinist  skilled  only  in  printing-presses.  If  a  descrip- 
tion is  sufficiently  full,  clear,  concise,  and  exact,  to  be  effec- 
tually understood  by  any  person  skilled  in  that  kind  of 
machinery,  or  other  subject  of  a  patent,  it  is  sufficiently  so  to 
meet  this  defence.* 

§  520.  The  thirteenth  defence  may  sometimes  succeed  with- 
out any  evidence  outside  of  the  letters  patent  themselves.  It 
will,  however,  always  be  prudent  to  fortify  the  defence  by  the 
testimony  of  an  expert  who  can  show  that  the  outward  embodi- 
ment of  the  terms  of  the  claim  is  uncertain  in  character  or  in 
extent. 

§  521.  The  fourteenth  defence  requires  several  items  of 
evidence  for  its  support.  It  requires  proof,  that  one  or  more 
of  the  claims  of  the  patent  are  void  for  want  of  embodying  a 
subject-matter  of  a  patent,3  or  for  want  of  invention,  or  for 
want  of  novelty  ; 4  and  that  the  patentee  has  long  known  the . 
facts  which  make  it  invalid  in  that  behalf.  No  disclaimer  is 
ever  necessary,  in  the  absence  of  all  of  the  first  three  of  these 
circumstances  ;  and  no  delay  to  file  one  is  unreasonable  in  the 

1  Gray  v.  James,  1  Peters,  Circuit  580,  1881. 

Court  Reports,  394,  1817  ;  Dyson  v.  3  O'Reilly  v.    Morse,  15   Howard, 

Danforth,  4  Fisher,  133,  1865.  121,  1853. 

9  Loom  Co.  v.  Higgins,  105  U.  8.          4  Revised  Statutes,  Section  4922. 


364:  ACTIONS    AT   LAW.  [CHAP.   XVIII. 

absence  of  the  fourth.  Indeed,  proof  of  a  necessity  for  a  dis- 
claimer, and  of  long-existing  knowledge  of  the  facts  out  of 
which  that  necessity  arose,  will  not  always  sustain  this  defence  ; 
because  delay  to  file  a  disclaimer  is  not  unreasonable,  so  long 
as  there  is  any  reasonable  doubt  whether  the  known  facts  con- 
stitute a  necessity  for  such  a  document.1 

§  522.  The  fifteenth  defence  can  seldom  be  supported  by 
evidence  that  the  original  patent  was  neither  inoperative  nor 
invalid  by  reason  of  a  defective  or  insufficient  specification  ; 
because  imperativeness,  from  one  of  these  causes,  exists  when- 
ever the  patent  does  not  secure  and  cover  all  the  inventions 
which  it  indicated,  suggested,  or  described,  and  which  might 
lawfully  have  been  claimed  in  it ; a  and  because,  when  not 
granted  on  account  of  such  inoperativeness,  reissues  are  gen- 
erally granted  on  account  of  invalidity  which  arose  by  reason 
of  a  defective  or  insufficient  specification,  or  by  reason  of  a 
too  extensive  claim.*  This  defence  therefore  generally  requires 
to  be  sustained  by  evidence  showing  that ;  whatever  inopera- 
tiveness or  invalidity  on  account  of  defective  or  insufficient 
specification,  or  on  account  of  too  extensive  claims,  is  to  be 
found  in  the  original  patent ;  the  error  arose  otherwise  than 
by  inadvertence,  accident,  or«  mistake.  The  absence  of  all 
three  of  these  mishaps  from  the  history  of  the  preparation  of 
any  original  specification,  may  be  proven  by  evidence  which 
shows  that  the  statements  or  claims  alleged  to  have  been 
omitted  in  one  or  another  of  these  ways,  were  in  fact  omitted 
with  deliberation  or  with  care,  or  were  omitted  because  they 
had  to  be,  in  order  to  secure  the  original  patent,4  or  were 
disclaimed  in  order  to  secure  an  extension  thereof.6  Evidence 
to  show  either  of  the  last  two  of  these  circumstances,  if  it  exists 
at  all,  may  generally  be  found  among  the  correspondence  on 
file  in  the  Patent  Office,  and  may  be  introduced  in  the  form 
of  certified  copies  of  the  letters  which  contain  it.* 

1  Silsby  v.  Foote,  20  Howard,  290,  *  James  v.  Campbell,  104,  U.  S., 

1857.  356,  1881. 

8  Wilson  v.  Coon,  18  Blatch.  532,  6  Leggett  v.  Avery,  101  U.  8.  256, 

1880.  1879. 

8  Bevised  Statutes,  Section  4916.  •  Eevised  Statutes,  Section  892. 


CHAP.   XVin.]  ACTIONS    AT    LAW.  365 

§  523.  The  sixteenth  defence  can  be  supported  by  the  intro- 
duction of  the  original  patent,  if  when  it  is  compared  with  the 
reissue,  the  latter  appears  to  claim  something  which  the 
original  did  not,  and  appears  to  have  been  applied  for  a  long 
time  after  the  original  was  granted.  How  long  this  space  of 
time  must  be  in  order  to  sustain  this  defence,  depends  largely 
upon  the  particular  circumstances  of  particular  cases.  The 
different  spaces  of  time  which  have  been  held  to  be  sufficient 
for  the  purpose,  are  collated  in  the  chapter  on  reissues. ' 

§  524.  The  seventeenth  defence  always  requires  to  be 
supported  by  the  introduction  of  the  original  patent  ; "  and 
generally  requires  expert  testimony  showing  that  the  outward 
embodiment  of  something  claimed  in  the  reissue,  is  sub- 
stantially different  from  anything  described,  suggested,  or 
indicated  in  the  original  specification  or  drawings.  The  judge 
will  not  reject  such  expert  testimony,  unless  the  case  is  so 
clear  that  he  would  have  decided  the  question  on  demurrer, 
if  the  original  letters  patent  had  been  made  a  part  of  the  bill.3 

§  525.  The  eighteenth  defence  requires  evidence  that  neither 
the  inventor,4  nor  any  executor  or  administrator  of  the  invent- 
or,5 made  any  proper  application  in  writing  for  the  extension 
of  the  patent.  It  will  not  be  enough  to  produce  a  certified 
copy  of  an  application  filed  out  of  due  time,  by  the  proper 
person,  or  one  filed  in  due  time,  by  an  improper  person  ; 
because  the  presumption  is,  that  the  Commissioner  would  not 
have  granted  the  extension  without  a  proper  application  there- 
for ;  and  because  the  production  of  an  improper  application 
does  not  negative  the  existence  of  a  proper  one. 

§  526.  The  nineteenth  defence  would  require  to  be  sup- 
ported by  the  introduction  of  an  officially  attested  copy  of  the 
record  of  the  court  repealing  the  patent  ; 8  or  if  that  record 
is  proven  to  have  been  destroyed  by  fire,7  or  rendered  illegible 

1  Section  227  of  this  book.  5  Wilson  v.  Kousseau,  4  Howard, 

*  Seymour  v.  Osborne,  11  Wallace,  673,  1846. 

516,  1870.  «  Revised  Statutes,  Section  905. 

3  Powder  Co.  v.  Powder  Works,  98  7  United     States     v.     Delespine's 
U.  8.  126,  1878.  Heirs,  12  Peters,  654,  1838. 

4  Revised  Statutes,  Section  4924. 


ACTIONS    AT   LAW.  [CHAP.   XTIH. 

by  wear  or  time,1  and  -not  restored  by  the  court  to  which  it 
pertains,8  it  may  be  proven  by  a  witness  who  examined  and 
copied  it  when  it  was  still  unharmed.8  But  parol  evidence 
will  not  be  admitted  of  a  record  of  which  only  a  part  is  lost. 
The  part  which  still  exists,  must  be  produced  or  proven  by  an 
officially  attested  copy.4 

§  527.  The  twentieth  defence  calls  for  the  introduction  in 
evidence,  of  a  properly  certified  copy  of  the  foreign  patent 
which  is  relied  upon  to  curtail  the  term  of  the  patent  in  suit ; 
and  if  the  parties  offer  no  testimony  to  aid  the  court  in 
determining  whether  the  foreign  patent,  so  proven,  is  for  the 
same  invention  as  the  United  States  patent  upon  which  the 
action  is  based,  then  the  court  will  determine  that  point  from 
an  inspection  of  the  two  documents.6  But  if  expert  evidence 
on  that  subject  is  offered,  it  will  doubtless  be  received.8 

§  528.  The  twenty-first  defence  is  supported  by  proof  that 
the  plaintiff  has  made  or  sold  one  or  more  specimens  of  the 
patented  article  without  marking  it  "  patented,"  together 
with  the  day  and  year  whereon  the  patent  was  granted.7 
When  such  evidence  is  introduced,  the  burden  is  shifted  to  the 
plaintiff,  to  show  that  before  suit  was  brought  the  defendant 
was  duly  notified  that  he  was  infringing  the  patent,  and  that 
he  continued  to  infringe  after  such  notice.8 

§  529.  The  twenty-second  defence  may  sometimes  be  sus- 
tained by  means  of  pointing  out  faults  in  the  plaintiff's  proof 
of  title.  "WTiere  that  proof  is  apparently  complete,  it  can  be 
attacked  only  by  the  introduction  of  assignments  or  grants  in 
writing,  which  intervene  between  some  of  the  links  of  the 
plaintiff's  chain  of  title  in  such  a  way  as  to  destroy  or  impair 
its  continuity.  The  numerous  points  of  law  relevant  to  title 
are  explained  in  the  eleventh  chapter  of  this  book.  It  is 

1  Little  v.  Downing,  37  New  Hamp-  5  De  Florez  v.  Raynolds,  17  Blatch. 

shire,  355, 1858.  439,  1880. 

8  Revised  Statutes,  Sections  899  «  Bischoff  v.  Wethered,  9  Wallace, 

and  900.  812,  1869. 

3 1  Wharton  on  Evidence,  135.  T  Revised  Statutes,  Section  4900. 

4  Nims  v.  Johnson  7  California,  8  Goodyear  v.  Allyn,  6  Blatch.  36, 

110,  1857,  1868. 


CHAP.   XVIII.]  ACTIONS    AT    LA\V.  367 

enough  to  say  in  this  connection  that  no  title  will  be  recognized 
in  a  court  of  law,  unless  it  is  evidenced  by  instruments  in  writ- 
ing,1 and  that  such  instruments  may  probably  be  proven  by  a 
duly  certified  copy  of  their  record  in  the  Patent  Office.11 

§  530.  The  twenty-third  defence  may  be  sustained  by  evi- 
dence of  a  written  or  a  parol  license,  or  of  an  express  or  an 
implied  license.  But  no  written  license  can  be  proven  by  a 
certified  copy,  because  the  law  does  not  provide  for  recording 
licenses,  and  because,  if  such  documents  are  sometimes  copied 
into  the  record  books  of  the  Patent  Office,  they  do  not  thereby 
become  Patent  Office  records.  Licenses  form  the  subject  of 
the  twelfth  chapter  of  this  book,  and  to  that  chapter  recourse 
may  be  had  for  further  information  in  regard  to  the  proper 
evidence  to  support  this  defence. 

§  531.  The  twenty-fourth  defence  may  be  sustained  by 
proof  of  a  total  or  partial  release,  given  after  the  infringement 
was  committed  and  before  the  action  was  commenced,  or  it 
may  be  sustained  pro  tanto,  by  a  partial  release  given  even  after 
the  action  was  begun. 3  A  paper  cannot  be  a  release,  if  executed 
before  the  infringement  to  which  it  refers  was  committed, 
because  no  man  can  relinquish  what  he  does  not  possess. 

Whether  a  release,  given  only  to  a  joint  infringer  with  the 
defendant,  can  be  invoked  by  the  defendant  himself,  is  a 
question  to  which  no  categorical  answer  can  at  present  be 
given.  It  depends  upon  the  question  whether  contribution 
can  be  enforced  between  infringers,  and  that  point  has  never 
been  settled  by  the  courts.  Nothing  more  useful  can  there- 
fore be  said  in  this  connection  than  to  state  the  principles  upon 
which  the  two  questions  seem  to  depend. 

The  doctrine  that  there  can  be  no  contribution  between  tort- 
feasors,  does  not  generally  apply  to  cases  where  the  wrong- 
doers suppose  their  doings  to  be  lawful.4  This  is  nearly  always 
true  of  infringers  of  patents.  When  they  infringe,  they  are 
often  ignorant  of  the  patents  which  they  violate,  or  if  they 


1  Revised  Statutes,  Section  4898.         1875. 

9  Section  495  of  this  book.  *  Bailey  v.  Bussing,  28  Connecti- 

8  Burdell  v.  Denig,  92  U:  S.  721,       cut,  461,  1859. 


368  ACTIONS    AT    LAW.  [CHAP.  XVIII. 

know  of  the  patents,  they  are  apt  to  give  themselves  the  bene- 
fit of  every  suggested  ground  for  doubt,  and  thus  suppose  that 
their  doings  do  not  constitute  an  infringement.  Their  wrong- 
doing is  mala  prohibita,  rather  than  mala  in  se.  Therefore, 
it  seems  to  be  generally  if  not  universally  true,  that  where  one 
of  several  joint  infringers  is  sued  alone,  and  suffers  and  pays 
a  judgment  for  the  joint  infringement,  he  may  compel  his  co- 
inf ringers  to  contribute  their  due  portion  of  that  payment, 
by  means  of  an  action  to  enforce  its  refunding.  That  being 
so,  it  will  follow  that  a  release  to  one  joint  infringer,  will 
operate  to  release  all  his  co-infringers  from  the  claim  of  the 
patentee.  "Where  contribution  can  be  enforced  between  tort- 
feasors,  a  full  release  to  one  must  release  all  ;  for  if  it  did  not 
do  so,  it  would  not  fully  release  that  one.  The  releasee  would 
not  be  fully  protected  by  his  release,  unless  his  co-infringers 
would  also  be  protected  by  it,  because  otherwise  the  releasee 
would  still  be  liable  to  an  action  for  contribution  brought 
against  him  by  a  joint  tort-feasor  who  had  been  compelled  to 
respond  in  damages  for  the  joint  infringement.  The  true  rule 
therefore  appears  to  be,  that  a  plain  release  given  to  either  of 
several  joint  infringers,  may  be  successfully  invoked  in  a  court 
of  law,  not  only  by  the  nominal  releasee,  but  also  by  either  or 
all  of  his  co-infringers. 

But  releases  can  be  .written  in  such  a  way  as  not  to  have  the 
effect  just  stated.  The  reason  of  the  rule  does  not  apply 
where  the  releasee  accepts  such  a  qualified  release  as  will 
leave  him  liable  to  contribution.  Therefore,  where  a  release 
expressly  provides  that  it  shall  not  operate  to  discharge  any 
other  person  than  the  releasee,  it  will  not  so  operate.  The 
releasee  cannot  reasonably  complain  of  this,  because  if  he  pays 
the  entire  damages  for  a  joint  infringement,  he  should  insist 
upon  an  entire  release  ;  and  if  he  pays  only  a  part  of  the 
damages,  he  ought  to  contribute  to  his  co-infringers,  if  the 
latter  are  compelled  to  pay  the  whole. 

§  532.  The  twenty-fifth  defence  may  bo  successful  without 
any  evidence,  because  the  burden  of  proof  is  upon  a  plaintiff 
to  show  an  infringement,1  and  because  some  plaintiffs  fail  to 
1  Brooks  v.  Jenkins,  3  McLean,  453,  1844. 


CHAP.   XVIII.]  ACTIONS   AT   LAW.  369 

sustain  that  burden.  Accordingly,  in  one  leading  law  case 
the  defendant  was  the  prevailing  party  on  the  circuit,  and  in 
the  Supreme  Court,  though  the  plow  which  he  made  was 
nearly  identical  with  that  covered  by  the  plaintiff's  patent, 
and  though  the  defendant  introduced  no  evidence  on  the  sub- 
ject of  infringement,  nor  indeed  on  any  other.'  So  also,  in 
a  leading  case  in  equity,  the  defendant,  though  beaten  on  the 
circuit,  successfully  interposed  the  defence  of  non-infringe- 
ment in  the  Supreme  Court,  without  any  evidence  on  that 
side  of  the  issue,  and  against  the  contrary  testimony  of  several 
experts.2  But  these  were  somewhat  clear  cases  of  non-infringe- 
ment, and  it  would  be  injudicious  to  rely  upon  such  a  defence 
without  evidence  to  support  it,  in  any  case  wherein  the  ques- 
tion of  infringement  is  really  debatable  in  the  light  of  the  law. 
Where  a  thing  made  or  used  or  sold  by  the  defendant,  is 
proven  or  is  stipulated,  and  where  a  competent  expert  testifies 
that  it  is  substantially  the  same  as  that  which  appears  U>  be 
covered  by  the  patent  in  suit  ;  it  is  always  advisable,  and  gen- 
erally necessary,  for  the  defendant  to  introduce  evidence  tend- 
ing to  show  non-infringement,  if  he  means  to  insist  upon  that 
defence.3  Evidence  of  this  sort  may  consist  of  the  testimony 
of  experts  who  are  acquainted  with  the  letters  patent  in  suit, 
and  with  the  doings  of  the  defendant,  and  are  of  opinion  that 
those  doings  are  substantially  different  from  everything  which: 
appears  to  be  secured  by  the  letters  patent,  and  can  give  an; 
intelligent  reason  for  that  opinion.  This  testimony,  like  all 
other  testimony  of  experts  on  questions  of  infringement,  is 
necessarily  based  on  hypothetical  constructions  of  the  patents 
in  suit,  and  is  therefore  to  be  disregarded,  if  the  judge  finds 
those  hypothetical  constructions  to  be  substantially  erroneous.. 
"Whether  the  fact  that  the  defendant  conformed  his  doings 
to  a  junior  patent  is  admissible  as  tending  to  show  non- 
infringement  of  the  patent  in  suit,  is  a  question  which  the 
Supreme  Court  once  decided  in  the  affirmative,4  and  after- 

',Prouty  v.  Buggies,  16  Peters,  3  Bennet  v.  Fowler,  8  Wallace, 

336,  1842.  447,  1869. 

j  Railway  Co.  v.  Sayles,  97  U.  S.  4  Corning  v.  Burdco,  15  Howard,, 

654,  1878.  252,  1853. 


370  ACTIONS    AT   LAW.  [CHAP.   XVIII. 

ward  in  the  negative.1  The  reason  of  the  matter  is  with  the 
later  decision,  because  a  thing  may  be  a  patentable  improve- 
ment on  a  prior  thing,  at  the  same  time  that  it  is  a  clear  in- 
fringement of  a  patent  for  that  thing. 

§  533.  The  twenty-sixth  defence  requires  to  be  proved  as 
pleaded.  Where  it  depends  upon  estoppel  in  pais,  it  may 
be  proved  by  parol,  or  by  the  production  of  documents,  ac- 
cording as  the  ground  of  the  estoppel  consists  of  things  done 
or  words  spoken,  or  consists  of  words  which  were  committed 
to  writing.  Where  the  defence  depends  upon  estoppel  by 
deed,  the  document  must  be  produced  or  otherwise  proved  ac- 
cording to  the  rules  of  evidence  applicable  to  such  cases  ;  and 
where  it  depends  upon  estoppel  by  record,  or  res  judicata, 
the  record  must  be  proved  in  accordance  with  the  laws  govern- 
ing such  evidence. 

§  534.  The  twenty-seventh  defence  seldom  requires  any 
evicjfince  to  sustain  it,  because  the  Federal  courts  take  judicial 
notice  of  the  statutes  of  limitation  ; a  and  because  the  plaintiffs 
pleadings  and  proofs,  when  taken  together,  will  generally  show 
when  the  infringement  sued  upon  was  committed.  But  if  the 
plaintiff's  presentation  of  the  case  leaves  the  latter  point  un- 
certain to  such  an  extent  as  to  affect  the  question  of  the  opera- 
tion' of  a  statute  of  limitation,  the  burden  is  then  cast  upon 
the  defendant,  to  prove  that  part  or  all  of  the  infringement 
is  old  enough  to  be  barred  by  the  statute  which  he  pleaded.* 

§  535.  Testimony  in  actions  at  law  for  infringements  of 
patents  may  always  be  taken  orally  in  open  court  ;  and  it  may 
be  taken  by  depositions  in  writing  where  the  witness  lives  more 
than  one  hundred  miles  from  the  place  of  trial,  or  when  he  is 
bound  on  a  voyage  at  sea,  or  is  about  to  go  out  of  the  United 
States,  or  out  of  the  judicial  district  in  which  the  case  is  to  be 
tried,  or  to  a  greater  distance  than  one  hundred  miles  from  the 
place  of  trial,  before  the  time  of  trial ;  or  when  he  is  ancient 
and  infirm.  The  sorts  of  magistrates  before  whom  such  a  dep- 

1  Blanchard  v.  Putnam,  8  Wallace,  Wallace,  121,  1869. 

420,  1869.  3  Russell   v.   Barney,    6    McLean, 

*  Pennington  v.  Gibson,  16  How-  577,  1855. 
*rd,  79,  1853  ;  Cheever  u.  Wilson,  9 


CHAP.   XVm.]  ACTIONS    AT   LAW-  371 

osition  may  be  taken,  are  judges  of  any  United  States  court ; 
judges  of  any  supreme,  superior,  or  county  court,  or  court  of 
common  pleas  of  any  of  the  United  States  ;  commissioners  of 
United  States  circuit  courts  ;  clerks  of  United  States  circuit  or 
district  courts  ;  mayors  or  chief  magistrates  of  cities  ;  and 
notaries  public.  If  any  such  magistrate  is  counsel  or  attorney 
for  either  party,  or  interested  in  the  event  of  the  cause,  he  is 
disqualified  from  acting.  Before  such  a  deposition  is  taken, 
reasonable  notice  thereof  must  be  given  in  writing  by  the 
party  intending  to  take  it,  or  his  attorney  of  'record,  to  the  op- 
posite party,  or  his  attorney  of  record,  as  either  may  be  nearest, 
and  that  notice  must  state  the  name  of  the  witness,  and  the 
time  and  place  of  taking  the  deposition.1  The  formalities  to 
be  observed  in  taking  and  transmitting  such  depositions  are 
prescribed  in  Sections  864  and  865  of  the  Revised  Statutes  ; 
and  they  must  be  strictly  complied  with,  in  order  to  make  such 
depositions  admissible  as  against  proper  objections.  Indeed,  no 
such  deposition  is  admissible  in  any  event,  unless  it  appears  to 
the  satisfaction  of  the  court,  that  the  witness  is  dead,  or  gone 
out  of  the  United  States,  or  to  a  greater  distance  than  one 
hundred  miles  from  the  place  where  the  court  is  sitting,  or 
that,  by  reason  of  age,  sickness,  bodily  infirmity,  or  imprison- 
ment, he  is  unable  to  travel  and  appear  at  court.2  Where 
the  witness  testified  in  his  deposition  to  the  then  existence  of 
the  fact  which  authorized  its  taking,  that  fact  is  presumed 
to  exist  at  the  time  the  deposition  is  offered  in  evidence,  and 
in  the  absence  of  contrary  proof,  the  deposition  itself  will 
satisfy  the  court  that  it  is  entitled  to  be  admitted. 

Most  objections  to  depositions,  in  order  to  be  efficacious, 
must  be  made  before  the  depositions  are  received  in  evidence  ; 
for  when  introduced  with  the  acquiescence  of  the  opposite 
party,  they  cannot  afterward  be  excluded  on  the  ground  that 
they  were  not  taken  in  accordance  with  the  rules  prescribed 
therefor.8  But  where  evidence  is  pertinent  to  either  of  several 
possible  defences,  one  or  more  of  which  were  pleaded,  and  one 

1  Revised  Statutes,  Section  863.  8  Evans   r.    Hettich,    7   Wheaton 

s  Revised  Statutes,  Section  865.  453,  1822. 


372  ACTIONS   AT  LAW.  [CHAP. 

or  more  of  wliich  were  not  pleaded  by  tlie  defendant,  the  fact 
that  the  evidence  was  not  objected  to  when  taken  or  admitted, 
doe*  not  make  it  admissible  in  support  of  any  defence  which 
was  not  pleaded. ' 

§  536.  The  judge  may  direct  the  jury  to  return  a  verdict 
for  the  defendant,  where  it  is  entirely  clear  that  the  plaintiff 
cannot  recover,  but  not  otherwise.* 

§  537.  Instructions  to  juries  embody  all  the  law  that  is  ap- 
plicable to  the  material  facts  in  evidence.  In  ascertaining 
that  law,  the  judges  resort  to  the  statutes  of  the  United  States, 
and  to  the  decisions  of  the  United  States  Supreme  Court ; 
and  where  further  information  is  required,  they  examine  or 
call  to  mind  the  decisions  of  the  Circuit  Courts  of  the  United 
States,  for  they  are  inferior  in  authority  to  those  of  the 
Supreme  Court  alone.3  But  judges  are  not  bound  to  conform 
their  instructions  to  any  statements  of  law  contained  in  any 
opinion  of  any  court,  unless  that  statement  was  strictly  appli- 
cable to  the  case  then  before  the  court  which  made  it.4  The 
Supreme  Court  has  sometimes  decided  cases,  after  full  argu- 
ment, quite  contrary  to  its  own  previous  obiter  dicta ;  and 
the  circuit  court  decisions  contain  hundreds  of  passing  re- 
marks which  cannot  be  harmonized  with  the  positive  decisions 
of  the  supreme  tribunal.  The  opinions  of  the  best  text- 
writers  are  sometimes  more  likely  to  be  followed  by  the 
Federal  courts,  than  are  the  dicta  of  the  judges  of  those  courts, 
because  the  best  legal  authors  consider  their  writings  more 
carefully  than  the  judges  appear  to  consider  their  dicta,  and 
because  neither  of  these  kinds  of  statements  have  any  more 
weight  than  the  reasons  upon  which  they  are  respectively 
based. 

Instructions  should  not  embody  the  opinions  of  the  judges 
on  any  issue  of  fact.  *  To  guard  against  the  observed  tendency 

1  Zane  v.  Soffe,  5  Bann.   &  Ard.  4  Day  v.  Kubber  Co.,  20  Howard, 

284,  1880.  216,  1857  ;  Day  v.  Stellman,  1  Fisher, 

*  Klein  v.  Russell,  19  Wallace,  463,  487,  1859. 

1873.  k  Turrill  v.  Railroad  Co.,  1  Wallace, 

J  Washburn  v.  Go-old,  3  Story,  157,  491,  1863. 
1844. 


CHAP.   XVIII.  ACTIONS   AT    LAW.  373 

in  judges  to  overlook  this  rule  in  patent  cases,  it  is  prudent 
to  require  all  instructions  to  be  given  in  writing,  that  being 
a  requirement  which  counsel  have  a  right  to  make  in  the 
State  courts  of  most  or  of  all  of  the  States,  and  that  being  a 
point  of  practice  which  is  consistent  with  the  nature  of  an 
action  of  trespass  on  the  case,  and  therefore  one  to  be  followed 
in  patent  actions  in  the  Federal  courts.1  The  danger  of 
irregularity  in  instructions  is  much  lessened  by  putting  them 
in  writing  ;  and  the  facilities  for  correcting  such  as  do  occur 
are  materially  increased  thereby.  While  he  is  bound  not  to 
tell  the  jury  how  to  decide  any  issue  of  fact,  the  judge  will 
tell  them  what  issues  of  fact  they  are  to  decide,  and  those  are 
the  issues  in  the  pleadings,  and  not  some  other  issue  which  the 
judge  may  think  is  the  one  upon  which  the  merits  of  the  case 
really  depend.2 

§  538.  The  verdict  in  a  patent  action  will  be  for  the  plain- 
tiff, if  every  defence  except  non-infringement  fails,  and  if 
that  fails  as  to  any  one  claim  of  the  letters  patent.3  So  also, 
the  plaintiff  is  entitled  to  a  verdict,  where  every  defence  fails 
except  the  sixteenth  and  seventeenth,  and  where  those  defences 
lack  application  to  one  or  more  of  the  claims  shown  to  have 
been  violated.4  And  he  is  also  entitled  to  a  verdict  where 
the  only  successful  defence  is  the  eighteenth,  if  his  action  is 
based  partly  on  the  first  term  of  the  patent,  and  if  that  term 
is  proven  to  have  been  infringed  by  the  defendant.  So  also, 
if  the  twenty-second,  twenty-third,  or  twenty-fourth  defence 
is  the  only  successful  one,  and  if  that  is  successful  only  as  to 
part  of  the  alleged  infringement,  the  plaintiff  will  be  entitled 
to  a  verdict  as  to  the  residue  ;  and  the  same  thing  may  be 
true  of  the  twenty-sixth  or  of  the  twenty-seventh  defence. 

§  539.  A  new  trial  may  be  obtained  by  the  defeated  party, 
if  the  jury  disregarded  the  instructions  of  the  judge  ; 5  or  failed 

1  Revised  Statutes,  Sections  914  4  Gage  v.  Herring,  107  U.  S.  640, 

arid  4919.  1882  ;  Gould  v.  Spicer,  15  Fed.  Rep. 

9  Grant  v.  Raymond,  6  Peters,  244,  344,  1882  ;  Cote  v.  Moffltt,  15  Fed. 

1832.  Rep.  345,  1883. 

1  Waterbury  Brass  Co.  v.  New  *  Tucker  v.  Spalding,  13  Wallace, 

York  Brass  Co.,  3  Fisher,  43,  1858.  453,  1871. 


374:  ACTIONS   AT   LAW.  [CHAP.  XVm. 

to  correctly  apply  them  to  the  issues  of  the  case  ; '  but  not 
where  the  only  error  complained  of  is  an  alleged  wrong  deci- 
sion of  such  an  issue,  unless  it  was  decidedly  against  the  weight 
of  evidence.* 

Excessive  assessment  of  damages,  even  where  it  is  undeni- 
ably so,  does  not  always  entitle  the  defendant  to  a  new  trial. 
Such  an  error  may  be  cured  by  the  plaintiff  remitting  such  a 
sum  as  the  judge  thinks  constitutes  the  excess,  in  all  cases 
where  he  thinks  that  the  error  of  the  jury  arose  from  inadver- 
tence ;  but  when  the  circumstances  of  the  case  clearly  indicate 
that  the  error  arose  from  prejudice,  or  from  reckless  disregard 
of  duty,  on  the  part  of  the  jury,  a  new  trial  will  be  granted.* 
But  no  excessive  verdict  can  be  corrected  by  the  Supreme 
Court,  unless  the  nisi  prius  judge  made  some  error  which 
entitles  the  defeated  party  to  a  venire  facias  de  novo.* 

Errors  made  by  judges  may  also  entitle  a  party  to  a  new 
trial,  but  no  such  error  will  have  that  effect  unless  it  was  ex- 
cepted  to  at  the  time  it  was  committed  ;  nor  where  it  consisted 
in  erroneous  admission  of  evidence,  which  the  subsequent 
course  of  the  trial  rendered  nugatory.5  So  also,  where  the 
error  of  the  judge  consisted  in  erroneous  instructions  relevant 
to  damages,  the  plaintiff  may  avoid  a  new  trial  by  consenting 
that  the  verdict  be  reduced  to  nominal  damages  and  costs.' 

Newly  discovered  evidence  may  also  furnish  a  good  ground 
for  granting  a  new  trial ;  but  not  where  that  evidence  might, 
with  due  diligence,  have  been  obtained  before  the  former 
trial ; 7  nor  where  it  is  merely  cumulative.8  But  evidence  is 

1  Johnson  v.  Boot,  2  Clif.  108,1862.  108,  1862  ;  Russell  v.  Place,  9  Blatch. 

8  Alden  v.   Dewey,    1   Story,  336,  175,  1871. 

1840  ;  Stimpson  v.  Railroads,  1  Wai-  *  Hogg    v.   Emerson,  11  Howard, 

lace,  Jr.  164,  1847  ;  Allen  v.  Blunt,  607,  1850. 

2  Woodbury  &  Minot,    121,   1846  ;  6  Allen  v.  Blunt,  2  Woodbury  4 
Aiken    v.    Bemis,    3  Woodbury    &  Minot,  121,  1846. 

Minot,  348,  1847  ;  Wilson  v.  Janes,          «  Cowing  v.  Rumsey,  8  Blatch.  36, 

3  Blatch.  227,  1854  ;  Bray  v.  Harts-       1870. 

horn,  1  Clif.  538,  1860  ;  Roberts  v.  '  Washburn  v.  Gould,  3  Story,  122, 

Schuyler,  12  Blatch.  448,  1875.  1844. 

s  Stafford  v.  Hair-Cloth  Co.  2  Clif.          8  Ames  v.  Howard,  1  Sumner,  482, 

83,  1862  ;  Johnson  r.  Root,  2  Clif.  1833. 


CHAP.  XVIII.]  ACTIONS   AT  LAW.  375 

not  merely  cumulative,  where  it  refers  to  facts  not  before 
agitated,  though  it  may  refer  to  defences  which,  in  the  former 
trial,  were  based  on  other  facts. '  A  party  moving  for  a  new 
trial  upon  the  ground  of  alleged  newly  discovered  evidence, 
must  succeed  or  fail  on  the  strength  or  weakness  of  the  case  as 
it  is  disclosed  in  his  affidavits,  and  in  the  answering  affidavits 
of  the  other  party  ;  for  the  moving  party  is  not  permitted  to 
rebut  the  latter  ;  nor  will  he  be  entitled  to  a  new  trial,  if  the 
opposing  affidavits  make  out  a  strong  case  against  him.2  When 
a  new  trial  is  granted  on  the  ground  of  newly  discovered  evi- 
dence, the  terms  usually  are,  that  the  costs  of  the  former  trial 
must  first  be  paid  by  the  applicant.3 

§  540.  Trials  by  a  judge  without  a  jury  require  to  be  so 
managed  that  the  issues  of  law  and  the  issues  of  fact  are  kept 
entirely  distinct ;  for  his  decision  on  the  former  are  re  viewable 
by  the  Supreme  Court,  while  his  finding  of  fact  has  the  same 
operation  as  the  verdict  of  a  jury.4  If  the  finding  of  the 
judge  be  a  general  one,  it  is  conclusive  on  all  issues  of  fact, 
and  is  also  conclusive  on  all  questions  of  law,  except  those 
which  arise  upon  the  pleadings,  and  those  which  the  bill  of 
exceptions  specifically  presents  as  having  been  ruled  upon  and 
excepted  to  in  the  progress  of  the  trial.5  If  the  finding  of 
the  judge  be  a  special  one,  it  will  still  be  conclusive  on  the 
facts  found  ;  but  the  sufficiency  of  those  facts  to  support  the 
judgment  will  be  open  to  review  in  the  Supreme  Court.' 
Where  the  judge  simply  finds  for  the  defendant,  and  enters  a 
judgment  accordingly,  that  judgment  can  be  taken  to  the 
Supreme  Court  for  review,  only  in  the  regular  common  law 
method  of  a  bill  of  exceptions  and  a  writ  of  error,  and  only 
on  pure  questions  of  law.7  Where  the  judge  finds  as  a  fact, 
that  the  patent  is  void  for  want  of  novelty,  or  that  the  defend- 
ant has  not  infringed  it,  and  thereupon  enters  a  judgment  for 

1  Aiken  v.  Betnis,  3  Woodbury  &          *  Revised  Statutes,  Section  649. 
Minot,  358,  1847.  *  Insurance  Co.  v.  Sea,  21  Wallace, 

9  Ames  v.  Howard,  1  Samner,  491,  160,  1874. 
1833.  «  Revised  Statutes,  Section  700. 

3  Aiken  v.  Bemis,  3  Woodbury  &          '  Revised  Statutes,    Sections  649 

Minot,  358,  1847.  and  700. 


376  ACTIONS    AT   LAW.  [CHAP.  XVIII. 

the  latter,  it  is  undeniable  that  the  fact  so  found  is  sufficient 
to  support  that  judgment.  In  arriving  at  his  opinion,  the 
judge  may  have  misunderstood  or  misapplied  the  tests  of 
novelty,  or  of  infringement,  but  still  his  finding  is  conclusive  ; 
because  the  Supreme  Court  is  authorized  to  examine  nothing 
but  the  sufficiency  of  the  facts  found.1  But  if  the  judge 
finds  that  A.  B.  invented,  made,  and  used  a  certain  described 
thing  in  the  United  States,  prior  to  the  invention  of  the 
patentee,  or  that  the  defendant  made,  used,  or  sold  only  a  cer- 
tain described  thing  during  the  life  of  the  patent,  and  there- 
fore renders  a  judgment  for  the  defendant  ;  that  judgment 
will  be  reversed  by  the  Supreme  Court  on  a  writ  of  error,  if 
that  court  is  of  opinion  that  the  thing  invented,  made,  and  used 
by  A.  B.  did  not  negative  the  novelty  of  the  patent,  or  is  of 
opinion  that  the  thing  made,  used,  or  sold  by  the  defendant 
did  really  infringe  the  patent  in  suit.3  These  illustrations  of 
the  practice  in  trials  by  a  judge  without  the  aid  of  a  jury,  show 
that  where  special  findings  of  facts  are  adopted  as  the  method 
of  laying  a  foundation  for  a  review  of  the  case  by  the  Supreme 
Court,  the  finding  ought  to  relate  to  the  fundamental  facts  of 
the  case,  and  not  merely  the  conclusions  of  fact  which  are 
deducible  therefrom. 

§  541.  Trial  by  referee  may  be  instituted  by  an  entry  of 
the  clerk  of  the  court,  made  at  the  request  of  the  parties,  sim- 
ply indicating  that  the  case  is  to  be  referred  to  the  person  or 
persons  named,  as  referee  ;  or  it  may  be  ordained  by  a  stipu- 
lation in  writing,  signed  by  the  parties  or  their  attorneys  and 
filed  in  the  case.  When  that  is  done,  a  rule  may  be  issued, 
or  an  order  of  court  may  be  entered,  referring  the  case  to  the 
referee  indicated  by  the  parties,  and  directing  him  to  hear  and 
determine  all  the  issues  thereof.  It  thereupon  becomes  the 
duty  of  the  referee  to  hear  the  parties,  and  then  to  decide  the 
controversy  and  make  a  report  to  the  court.  The  report  may 
be  special,  setting  forth  the  details  of  the  evidence  upon  which 
it  is  based,  or  it  may  be  general,  giving  only  the  conclusions 

1  Jennisons  v.  Leonard,  21  Wai-  147,  1874  ;  Insurance  Co.  v.  Sea,  21 
lace,  307,  1874.  Wallace,  160,  1874. 

8  French  v.  Edwards,  21  Wallace, 


CHAP.  XVIII.]  ACTIONS    AT    LAW.  377 

to  which  that  evidence  carried  the  mind  of  the  referee.  To 
that  report,  either  party  may  except  in  writing,  and  upon  the 
hearing  of  those  exceptions,  the  court  may  adopt  or  reject  the 
report  and  enter  judgment  accordingly,  or  it  may  recommit 
the  report  to  the  referee  with  further  directions.1 

Such  is  substantially  the  outline  of  the  trial  by  referee,  which 
is  delineated  in  the  decision  just  cited.  Inasmuch  as  that 
form  of  trial  is  not  provided  for  by  any  United  States  statute, 
its  details  are  regulated  by  the  laws  of  the  particular  State  in 
which  such  a  trial  is  had.8  Recourse  must  therefore  be  had 
to  those  laws  for  sundry  points  of  information  relevant  to  the 
methods  of  taking  testimony  before  referees  ;  the  time  when 
referees'  reports  must  be  made  ;  the  weight  attached  to  such 
reports  on  issues  of  fact  ;  and  the  proper  practice  by  means 
of  which  to  secure  the  judgment  of  the  court  upon  reviewable 
points. 

§  542.  Judgments  follow  verdicts  of  juries,  findings  of 
judges,  or  reports  of  referees  ;  unless  those  verdicts  are  set 
aside,  those  findings  reconsidered  and  modified,  or  those 
reports  rejected  or  recommitted.  It  is  not  the  practice  of  the 
United  States  Circuit  Courts,  to  require  a  rule  for  a  judgment 
to  be  entered  in  any  case.  Judgments  are  entered  by  the 
clerk  of  the  court  under  a  special  or  general  authority  from 
the  judge,  and  where  so  entered  are  binding  as  the  act  of  the 
court.3  The  circumstances  which  justify  courts  in  entering 
judgments  in  patent  cases,  for  any  sum  above  the  amount  of 
the  verdict,  finding,  or  report,  but  not  exceeding  three  times 
the  amount  thereof,  are  explained  in  the  chapter  on  damages. 
That  the  court  has  the  same  power  in  this  particular,  in  cases 
where  the  damages  are  ascertained  by  the  finding  of  the  judge, 
or  by  the  report  of  a  referee,  that  it  has  in  cases  where  they 
are  ascertained  by  the  verdict  of  a  jury,  is  a  point  which  has 
not  been  judicially  decided,  but  is  one  which  can  hardly  be 
doubted. 


1  Heckers    v.   Fowler,    2  Wallace,        and  914. 

132,  1864.  "Hectors  v.    Fowler,   2   Wallace, 

'Revised    Statutes,   Sections   721       132,  1864. 


378  ACTIONS    AT   LAW.  [CHAP.  XVIII. 

§  543.  Costs  are  recoverable  by  all  plaintiffs  \vho  secure 
judgments  for  infringements  of  patents  ; '  except  where  it  ap- 
pears on  the  trial  that  one  or  more  of  the  claims  of  the  letters 
patent  are  void  for  lack  of  being  the  subject  of  a  patent,  or 
for  want  of  invention,  or  for  want  of  novelty,  and  does  not 
appear  that  the  proper  disclaimer  was  filed  in  the  Patent  Office 
before  the  commencement  of  the  action.*  There  is  no  United 
States  statute  which  provides  that  defendants  shall  recover 
costs  in  any  patent  case.  The  common  law  of  England  allowed 
no  costs  to  either  party  in  any  action  at  law  ; 3  and  the  statutes 
of  Gloucester,4  which  supplied  that  defect  as  to  plaintiffs,  did 
not  supply  it  as  to  defendants.  The  statute  of  23  Henry 
VIII.,  Chapter  15,  enacted,  however,  that  where,  in  actions 
on  the  case,  the  plaintiff  is  nonsuited  after  the  appearance  of 
the  defendant ;  or  where  the  verdict  happens  to  pass,  by  law- 
ful trial,  against  the  plaintiff,  the  defendant  shall  have  judg- 
ment to  recover  his  costs  against  the  plaintiff,  and  shall  have 
such  process  and  execution  for  the  recovery  of  the  same,  as 
the  plaintiff  might  have  had  against  the  defendant,  in  case  the 
judgment  had  been  given  for  the  plaintiff.  This  statute  of 
Henry  VIII.  having  been  enacted  before  the  founding  of  the 
English  colonies  in  America,  and  being  suited  to  the  condition 
of  society  in  the  United  States,  is  in  force  in  the  United  States 
courts  to  the  same  extent  that  it  would  be,  if  it  were  one  of  the 
rules  of  the  common  law.6 

§  544.  All  the  items  of  costs  which  are  taxable  in  the  United 
States  courts  are  specified  in  the  United  States  statutes.'  The 
province  of  a  taxing  officer  is  therefore  limited  to  comparing 
suggested  items  with  the  particulars  of  those  statutes,  and  to 
taxing  those,  and  only  those,  which  he  finds  enumerated  there- 
in.7 And  no  expenses,  other  than  taxable  costs,  can  be  lawfully 

1  Revised  Statutes,  Section  4919  ;  8  Hathaway  v.  Roach,  2  Woodbury 

Merchant  v.  Lewis,  1  Bond,  172,1857.  &  Minot,  69,  1846. 

*  Revised  Statutes,  Sections  973,  •  Revised  Statutes,  823  ;  The  Bal- 

4917,  and  4922.  timore,  8  Wallace,  392,  1869  ;  Lyell 

3  Day  v.  Woodworth,  13  Howard,  v.  Miller,  6  McLean,  422,  1855. 
372,  1851.  i  Dedekam  v.  Vose,  3  Blatch.  153, 

4  6  Edward  I.  Chapter!.,  A.D.  1278.  1853. 


CHAP.  XVIII.]  ACTIONS   AT  LAW.  379 

inserted  in  any  cost  bill.1  On  most  points,  the  statutes  rele- 
vant to  fees  are  so  clear  that  they  require  no  explanation  ;  but 
in  some  particulars,  they  needed  and  have  received  judicial 
construction.  Those  particulars  may  be  conveniently  explained 
in  a  few  of  the  sections  which  immediately  follow. 

§  545.  One  attorney's  docket  fee,  and  no  more,  is  taxable  in 
each  case  against  the  defeated  party.2  There  is  no  warrant  for 
taxing  the  unsuccessful  party  with  a  separate  docket  fee  for 
each  of  his  adversary's  attorneys,  nor  with  a  separate  docket 
fee  for  each  term  during  which  a  case  has  been  pending  in 
court,  nor  for  taxing  any  docket  fee  in  favor  of  any  attorney 
of  the  defeated  party.  Neither  is  there  any  warrant  for  taxing 
an  attorney's  deposition  fee  in  favor  of  any  attorney  of  the 
beaten  party,  or  in  favor  of  more  than  one  attorney  of  the 
party  which  prevails  in  the  action.3 

§  546.  The  fees  of  the  clerk  of  the  court  are  in  general 
taxable  against  the  defeated  party  ;  but  several  of  the  items  to 
which  he  is  entitled,  are  not  so  taxable,  but  are  to  be  paid  by 
the  party  for  which  he  rendered  the  services  to  which  they 
refer.  Among  these  items,  are  copies  of  the  record  ordered 
by  a  party  for  his  own  use.*  As  the  greater  must  include  the 
less,  this  rule  must  apply  also  to  copies  of  pleadings,  deposi- 
tions or  other  papers  which  form  parts  of  the  records  of  cases. 
The  extent  to  which  clerks  may  make  records,  and  charge 
defeated  parties  therefor,  depends  upon  the  rules  of  each 
particular  court.  In  some  districts,  those  rules  appear  to  be 
made  with  a  view  to  giving  the  clerks  as  much  scope  in  this 
respect  as  can  be  supported  by  any  argument  ;  while  in  other 
courts,  the  practice  is  to  charge  parties  with  no  more  recording 
than  the  reasonable  requirement  of  each  case  seems  to  demand. 

§  547.  The  fees  of  a  commissioner  or  other  magistrate,  who 
takes  a  deposition  in  a  case,  are  generally  taxable  against  the 
defeated  party/  but  if  the  deposition  is  not  offered  in  evi- 

1  Parks  u.Booth,  102  U.S.  106,1880.  s  Eevised  Statutes,  Section  824. 

*  Dedekam  v.  Vose,  3  Blatch.  153,  4  Caldwell   v.  Jackson,  7  Cranch, 

1853  ;  Troy  Iron  &  Nail  Factory  v.  277,   1812. 

Corning,  7  Blatch,  17,  1869  ;  Parker          6  Fry  v,  Yeaton,  1  Cranch's  Circuit 

v.  Bigler,  1  Fisher,  285,  1857.  Court  Reports,  550,  1809. 


380  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

dence  at  the  trial,  those  fees  cannot  be  so  taxed.1  And 
reasoning  by  analogy  from  the  taxation  of  attorneys'  deposition 
fees,  it  should  follow  that  magistrates'  fees  are  not  taxable 
on  depositions  which  are  offered  in  evidence,  but  are  not 
admitted." 

§  548.  Witness  fees  are  generally  taxable  against  the  defeated 
party,  whether  the  testimony  was  given  orally  in  court  or  by 
deposition  before  a  magistrate.3  But  they  are  not  so  taxable 
when  the  testimony  is  taken  by  deposition  and  the  deposition 
is  not  offered,4  or  if  offered,  is  not  admitted  in  evidence.' 
Nor  will  a  defeated  party  be  taxed  with  the  fees  of  more  than 
three  witnesses  to  one  fact,  unless  the  prevailing  party  satisfies 
the  court  by  affidavit,  that  the  additional  witnesses  were  really 
necessary  to  adequately  support  his  contention  on  that  point.' 

Whether  any  defeated  party  is  taxable  with  the  fees  of  any 
witness  who  testified  on  request,  and  without  a  subprena,  is 
an  unsettled  question.  It  has  been  held  in  the  affirmative  by 
Judge  WOODRUFF  '  and  Judge  HALL  ; 8  and  in  the  negative  by 
Justice  McLsAN,*  Judge  SAWYER"  and  Judge  LEAVITT." 
The  ablest  arguments  on  the  two  sides  of  the  issue  are  those  of 
Judge  WOODRUFF  and  Judge  SAWYER  ;  and  there  is  probably 
nothing  to  be  said  on  the  subject,  that  is  not  said  in  one  or  the 
other  of  the  five  cases  cited.  If  it  is  necessary,  in  order  to 
make  witness  fees  taxable,  that  the  witness  should  be  served 
with  a  subposna,  it  is  not  necessary  that  he  should  be  so  served 
by  any  officer.  Service  by  a  private  person  is  sufficient. " 

Witness  fees  are  taxable  in  favor  of  a  defendant,  though  liis 
witnesses  are  not  examined,  because  the  action  is  not  pros- 

1  Hathaway  v.  Roach,  2  Woodbury  8  Cummings  v.  Plaster  Co.  6  Blatch. 

&  Minot,  75,  1846.  510,  1869. 

8  Bevised  Statutes,  Sectioii  824.  •  Dreskill  v.   Parish,    5   McLean, 

3  Revised  Statutes,  Section  848.  213,  1851. 

4  Hathaway  v.  Roach,  2  Woodbury  10  Spaulding  v.  Tucker,  4  Fisher, 
&  Minot,  63,  1846.  637,  1871. 

6  Section  547  of  this  book.  "  Woodruff  v.  Barney,  2   Fisher, 
«  Bussard  v.  Catalino,  2  Cranch's       244,  1862. 

Circuit  Court  Reports,  421,  1823.  »  Power  v.  Semmes,  1   Cranch's 

7  Dennis  v.  Eddy,  12  Blatch.  196,       Circuit  Court  Reports,  247,  1805. 
1874. 


CHAP.  XTin.]  ACTIONS    AT   LAW.  381 

ecuted  ;  and  where  witnesses  attend  more  than  once  at  the 
same  term,  because  of  a  stipulated  postponement  of  the  trial, 
their  fees  are  to  be  taxed  as  for  continuous  attendance  during 
the  interim,  and  not  as  for  repeated  journeys  from  their 
homes. '  Witnesses  from  a  distance  are  entitled  to  fees  for 
Sunday,  where  they  are  detained  over  that  day.1 

§  549.  The  taxation  of  costs  may  properly  be  made  at  the 
time  the  judgment  is  entered,  and  that  is  the  course  which 
best  secures  the  rights  of  the  parties.  But  a  blank  may  be  left 
in  the  judgment  for  that  purpose,  and  may  be  filled  by  a  taxa- 
tion made  nunc  pro  tune,  after  the  judgment  has  been  affirmed 
by  the  Supreme  Court.3  Where  the  former  practice  is  fol- 
lowed, the  legality  of  the  taxation  may  probably  be  reviewed 
by  the  Supreme  Court,  if  the  case  is  taken  to  that  forum  by 
the  defendant,  to  secure  a  reversal  of  a  judgment  against  him 
for  substantial  damages  as  well  as  costs,  and  if  the  court  affirms 
or  modifies  the  judgment  as  to  the  damages.4  But  where 
only  nominal  damages  and  costs  are  adjudged  against  a  defend- 
ant, he  cannot  take  the  case  to  the  Supreme  Court  for  the  pur- 
pose of  securing  a  reversal  of  the  judgment  or  a  diminution  of 
the  costs.6  Where  a  judgment  for  costs  is  entered  against  a 
plaintiff  on  the  basis  of  a  verdict  for  the  defendant,  the  plain- 
tiff may  go  to  the  Supreme  Court  on  a  writ  of  error.  If  he 
secures  a  reversal  of  the  judgment  for  errors  on  the  trial,  there 
will  be  no  occasion  for  the  court  to  consider  the  correctness  of 
the  taxation  of  costs.  If,  on  the  other  hand,  the  court  finds 
no  error  upon  which  to  ground  a  reversal,  it  will  seek  for  no 
error  in  the  taxation.' 

The  clerks  of  the  Circuit  Courts  are  the  primary  taxing 
officers  of  those  tribunals  ;  but  they  perform  that  duty  under 
the  general  or  particular  direction  of  the  judges.  The  taxation 

1  Hathaway  v.  Roach,  2  Woodbury  1880. 

&  Minot,  63,  1846.  5  Elastic  Fabric  Co.  v.  Smith,  100 

9  Schott  v.  Benson,  1  Blatch.  564,  U.  S.  110,  1879  ;   Paper-Bag  Cases, 

1  «•"'<>.  105  U.  S.  772,  1881. 

3  Sizer  v.  Many,   16    Howard,   98,  •  Canter  v.  Insurance  Companies, 
1853.  3  Peters,  318,  1830. 

4  Parks  v.  Booth,  102  U.  S.  106, 


382  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

of  costs  is  ordinarily  made  by  the  clerk  on  his  own  motion, 
or  at  the  request  of  the  prevailing  party,  and  without  notice 
to  the  defeated  party.  If  the  latter  is  dissatisfied  with  the 
result,  the  court  will  hear  his  motion  for  a  retaxation.  If 
such  a  motion  is  accompanied  with  an  explanation  showing 
colorable  ground  for  a  claim  of  error  in  the  taxation,  the  court 
will  order  the  clerk  to  retax  the  costs,  upon  the  mover  giving 
the  opposite  party  due  notice  of  the  time  and  place  thereof, 
and  paying  the  costs  occasioned  thereby.1  Then,  if  either 
party  is  dissatisfied  with  the  result  of  the  retaxation,  he  may 
appeal  to  the  court  ;  but  as  a  foundation  for  the  hearing  of 
such  an  appeal,  he  must  secure  from  the  clerk  an  itemized  bill 
of  the  charges  to  which  he  objects  ;  *  and  as  a  foundation  for 
success  on  that  hearing,  must  show  that  part  or  all  of  those 
items  are  unwarranted  by  the  statute.  All  of  these  proceed-' 
ings  must  take  place  at  the  term  in  which  the  judgment  is 
entered  ; 8  except  in  cases  where  blanks  for  costs  are  left  in 
judgments,  pending  writs  of  error  from  the  Supreme  Court. 

§  550.  A  writ  of  error,  properly  taken  out  from  the  office 
of  the  clerk  of  the  Supreme  Court,4  will  carry  any  action  at 
law,  for  an  infringement  of  a  patent,  to  the  Supreme  Oourt  of 
the  United  States  for  review,  regardless  of  the  amount  of 
damages  in  controversy  ;  *  and  whether  the  case  was  tried  by  a 
jury,  by  a  referee,  or  by  a  judge  alone.'  But  no  writ  of  error 
can  carry  any  question  of  fact  to  the  Supreme  Court.7  The 
sole  function  of  such  a  writ  is  to  secure  from  that  tribunal  a 
review  of  the  questions  of  law  involved  in  a  case,  or,  where 
the  finding  below  was  made  by  a  judge,  and  was  special,  to 
secure  a  review  of  the  question  whether  the  facts  so  found  are 
sufficient  to  support  the  judgment  based  thereon." 

1  Collins  v.  Hathaway,  Olcott's  Philip  v.  Nock,  13  Wallace,  185, 

Reports,  182, 1845.  1871. 

s  Dedekam  v.  Vose,  3  Blatch.  153,  8  York  &  Cumberland  Railroad  Co. 

1853.  v.  Myers,  18  Howard,  246,  1855  ; 

8  Blagrove  v.  Ringgold,  2  Cranch's  Heckers  v.  Fowler,  2  Wallace,  123, 

Circuit  Court  Reports,  407,  1823.  1864. 

4  West  v.  Barnes,  2  Dallas,  401,  '  Heckers  v.  Fowler,  2  Wallace, 

1791.  123,  1864. 

4  Revised  Statutes,   Section  699  ;          •  Revised  Statutes,  Section  700. 


CHAP.   XVm.]  ACTIONS    AT    LAW.  383 

§  551.  Bills  of  exception,  allowed  and  signed,  or  sealed  by 
the  judge,  constitute  the  only  mode  by  which  the  questions  of 
law  that  arise  on  the  trial  of  a  case,  can  be  prepared  for  trans- 
mission to  the  Supreme  Court  in  pursuance  of  a  writ  of  error.1 
But  a  paper  which  is  incorporated  in  the  record,  and  which  has 
all  the  substantial  characteristics  of  a  bill  of  exceptions,  will  be 
treated  as  such,  even  though  it  is  not  so  entitled.2  Such  a 
document  should  state  no  more  of  the  case  than  is  necessary 
to  present  the  questions  which  are  reviewable  in  the  Supreme 
Court,  and  which  the  plaintiff  in  error  seeks  to  have  reviewed 
there.3  If  those  questions  relate  only  to  the  pleadings,  the 
pleadings  only  should  be  inserted  in  the  bill  of  exceptions. 
Where  those  questions  relate  only  to  the  competency  of  a  wit- 
ness, the  bill  of  exceptions  need  only  show  that  the  witness 
was  offered,  and  was  accepted  or  rejected,  as  the  case  may  be, 
and  that  such  admission  or  rejection  was  duly  excepted  to, 
and,  in  case  of  a  rejection  of  a  witness  to  want  of  novelty, 
that  due  notice  of  the  fact,  to  be  proven  by  him,  was  served 
on  the  opposite  party  ;4  and  in  all  cases  of  rejection,  that  the 
testimony  which  the  witness  would  have  given,  was  material 
to  the  issue.  This  last  requisite  was  once  held  by  the  Supreme 
Court  to  be  unnecessary  ; 6  but  that  tribunal  afterward  decided, 
that  to  render  an  exception  available  in  that  court,  it  must 
affirmatively  appear  that  the  ruling  excepted  to,  affected,  or 
might  have  affected,  the  decision  of  the  case.'  Accordingly,  in 
the  case  last  cited,  the  court  held  that  where  particular  answers 
of  a  competent  witness  were  excluded  by  the  court  below,  the 
bill  of  exceptions  must  contain  those  answers,  and  must  show 
that  they  were  material  to  the  issues  ;  and  the  court  said  in 
the  same  case  that  where  particular  questions  are  excluded,  and 
therefore  not  answered,  the  bill  of  exceptions  must  show  what 

1  Insurance  Co.  v.  Lanier,  95  U.  S.  Co.   v.   Stimpson,   14    Peters,   448, 

171,  1877.  1840  ;  Blanchard  v.  Putnam,  8  Wal- 

8  Herbert  v.  Butler,  97  U.  S.  319,  lace,  420,  1869. 

1877.  5  Vance  v.  Campbell,  1  Black.  427, 

3  Hausknecht  v.  Claypool,  1  Black.  1861. 

431,  1861.  «  Railroad  Co.  v.  Smith,  21  Wai- 

4  Philadelphia  &  Trenton  Railroad       lace,  255,  1874. 


384  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

facts  the  party  offered  to  prove  by  means  of  those  questions, 
and  that  such  facts  were  material  to  the  case.  And  in  a  still 
later  case,  the  court  held,  that  where  a  particular  question  was 
objected  to,  but  was  admitted  and  was  answered,  the  bill  of 
exceptions  much  show  what  the  answer  was,  in  order  to  enable 
the  Supreme  Court  to  pass  upon  the  propriety  of  the  evi- 
dence. ' 

§  552.  Where  the  questions  which  are  sought  to  be  brought 
before  the  Supreme  Court,  relate  only  to  the  instructions 
which  the  court  below  gave,  or  refused  to  give  to  the  jury, 
the  bill  of  exceptions  should  set  forth  the  issues  of  the  plead- 
ings, and  the  substance  of  the  charge  or  refusal  to  charge,  as 
the  case  may  be,  together  with  whatever  part  of  the  evidence 
is  necessary  to  enable  the  Supreme  Court  to  decide  upon  the 
propriety,  or  impropriety,  of  the  action  of  the  court  below.  The 
issues  of  the  pleadings  should  be  stated  in  the  bill  of  excep- 
tions, for  otherwise  the  appellate  tribunal  cannot  know  whether 
the  charge  or  refusal  to  charge,  which  was  excepted  to,  was 
material  to  the  case  ;  and  because  the  Supreme  Court  will  not 
sit  to  try  moot  issues  of  law,  nor  to  establish  legal  propositions 
in  cases  wherein  those  propositions  are  not  involved."  The 
substance  of  the  charge,  rather  than  the  charge  in  extenso, 
should  be  stated  in  the  bill,  because  the  Supreme  Court  does 
not  desire  to  be  occupied  in  listening  to  minute  criticisms  and 
observations  upon  expressions  incidentally  introduced  into  a 
charge  for  purposes  of  argument  or  illustration,  and  which,  if 
they  were  the  direct  point  in  judgment,  might  need  qualifica- 
tion, but  which  do  not  show,  that  upon  the  whole  the  relevant 
law  was  not  justly  expounded  to  the  jury.*  But  the  whole 
substance  of  the  charge  should  be  stated  where  nothing  but 
charged  matter  is  excepted  to  ;  because  if  part  is  omitted,  the 
Supreme  Court  cannot  know  that  the  omitted  portion  did  not 
cure  the  faults  of  the  parts  inserted.  So  also,  where  the  mat- 
ter which  is  excepted  to  is  a  refusal  to  charge  ;  not  only  the 

1  Lovell  v.  Davis,  101  U.  8.  542,       1881. 

1879.  3  Evans  v.  Eaton,  7  Wharton,  356, 

*  Jones  v.  Buokell,  104  U.  S.  554,       1822. 


CHAP.  XVin.]  ACTIONS   AT  LAW.  385 

refused  instruction,  but  also  the  whole  substance  of  the  given 
charge,  should  be  inserted  in  the  bill  of  exceptions  ;  for  other- 
wise the  Supreme  Court  cannot  be  informed  whether  the  refused 
instruction  was  not  substantially  contained  in  the  charge  which 
was  actually  given  ;  and  because  judges  are  never  bound  to  in- 
struct juries  in  the  form  requested,  provided  they  substantially 
embody  the  whole  of  the  relevant  law  in  the  charges  which  they 
give. l  Where  nothing  but  charged  matter  is  excepted  to,  the 
bill  of  exceptions  should  not  contain  any  part  of  the  evidence  ; 
because  the  only  question  before  the  Supreme  Court  in  such 
a  case  is  the  correctness  of  the  charge."  But  where  a  refusal 
to  charge  is  excepted  to,  the  bill  must  contain  the  evidence  to 
which  the  refused  instruction  relates,  or  must  contain  a  state- 
ment of  facts  pertinent  to  that  point,  and  a  statement  that 
evidence  was  introduced  tending  to  prove  those  facts  ;  because 
no  court  is  bound  to  give  any  charge  which  does  not  relate  to 
the  evidence,  no  matter  how  sound  the  proposed  instruction 
may  be,  as  a  proposition  of  law. 

§  553.  Specific  exceptions  must  be  made  to  instructions,  in 
order  to  entitle  the  objector  to  a  review  of  those  instructions 
in  the  Supreme  Court.  Where  a  requested  instruction  is 
refused,  and  the  refusal  is  excepted  to,  that  refusal  will  be 
sustained  by  the  Supreme  Court,  if  the  requested  instruction 
was  unsound  in  any  particular.3  Counsel  ought  therefore  to 
carefully  separate  their  propositions  of  law  from  each  other, 
when  framing  their  requests  for  instructions,  lest  one  erroneous 
proposition  deprive  them  of  the  benefit  of  several  sound 
ones. 

§  554.  Exceptions  to  charges,  or  to  refusals  to  charge,  must 
be  made  and  noted  while  the  jury  is  at  the  bar.4  But  bills  of 
exception  may  be  drawn  up,  and  signed  or  sealed  by  the  judge 
at  any  time  before  the  expiration  of  the  term,  unless  the  judge 
enforces  some  rule  of  his  court,  which  prescribes  a  shorter  time 

1  Indianapolis  <fe  St.  Louis  Kail-  » Indianapolis  &  St.  Louis  Hail- 
road  Co.  v.  Horst,  93  U.  S.  295,  1876.  road  Co.  v.  Horst,  93  U.  S.  295, 1876. 

*  Pennock  v.  Dialogue,  2  Peters,  4  Phelps  v.  Mayer,  15  Howard, 

1,  1829.  160,  1853. 


386  ACTIONS  AT  LAW.  [CHAP.  xvni. 

for  the  preparation  and  presentation  of  such  documents  for 
his  approval ;  and,  if  not  otherwise  too  late,  such  bills  may  be 
prepared  and  signed  after  a  writ  of  error  has  been  sued  out 
from  the  Supreme  Court  to  transfer  the  case  to  that  tribunal.1 

1  Hunnicutt  v.  Peyton,  102  U.  S.  353,  1880. 


CHAPTER   XIX. 

DAMAGES. 


555.  The  generic  measure  of  dam- 


556.  Established  royalties  as  specific 
measures  of  damages. 

557.  Tests  applied  to  royalties,  on 
behalf  of  defendants. 

558.  Tests  applied  to  royalties  on 
behalf  of  plaintiffs. 

559.  Money  paid  for  infringement 
already  committed,  is  no  meas- 
ure   of     damages    in    another 
case. 

660.  Koyalties  reserved  on  sales  of 
patents. 

561.  Koyalties  for  licenses  to  make 
and  use,  and  royalties  for  li- 
censes to  make  and  sell. 


562.  Proportion  of  licensed  to  un- 
licensed practice  of  an  invention. 

563.  Measure  of  damages  in  the  ab- 
sence of  an  established  royalty. 

564.  Damages  for  unlicensed  making, 
without   unlicensed   selling   or 
using. 

565.  Evidence  of  damages. 

566.  Indirect    consequential    dam- 
ages. 

567.  Exemplary  damages. 

568.  Increased  damages. 

569.  Actual  damages  not  affected  by 
infringement  being  unintended. 

570.  Counsel  fees  and  other  expen- 
ses, 

571.  Interest  on  damages. 


§  555.  THE  pecuniary  injury  which  a  plaintiff  incurs  by  rea- 
son of  a  defendant's  infringement  of  his  patent,  is  the  generic 
measure  of  the  damages  which  that  plaintiff  is  entitled  to 
recover  on  account  of  that  infringement.1  Such  an  injury  is 
often  called  the  plaintiff's  loss,"  and  sometimes  it  is  strictly 
that,  but  often  it  is  a  loss  only  in  the  sense  that  it  is  a  failure 
to  acquire  a  just  and  deserved  gain.  Whether  the  injury 
caused  to  a  plaintiff  by  an  infringement  was  a  loss  in  one  or 
the  other  of  these  senses,  its  magnitude  must  always  be  ascer- 
tained, in  order  to  ascertain  the  amount  of  the  damages  which 


1  Goodyear  v.  Bishop,  2  Fisher, 
158,  1861. 

9  Suffolk  Co.  v.  Hayden,  3  Wallace, 
315,  1865  ;  Cowing  v.  Rumsey,  8 


Blatch.  36,  1870;  McComb  v.  Brodie, 
1  Woods,  161,  1871  ;  La  Baw  v. 
Hawkins,  2  Bann.  &  Ard.  563,  1877. 


388  DAMAGES.  [CHAP.  xrx. 

he  is  entitled  to  recover.  The  amount  of  the  profits  which  the 
defendant  derived  from  his  infringement  has  no  relevancy  to 
the  question  of  the  plaintiffs  damages  ;  because  these  profits 
are  sometimes  much  larger  than  the  plaintiffs  pecuniary  in- 
jury ; '  and  where  they  are  smaller,  that  fact  is  no  defence  to 
the  plaintiff's  right  to  recover  full  damages  for  the  pecuniary 
injury  which  the  infringement  caused  him  to  incur.* 

To  ascertain  the  extent  of  the  pecuniary  injury  which  a 
particular  infringement  caused  a  particular  plaintiff,  it  is 
necessary  to  ascertain  the  difference  between  his  pecuniary 
condition  after  that  infringement,  and  what  that  condition 
would  have  been  if  that  infringement  had  not  occurred.  That 
difference  depends  upon  the  way  in  which  the  plaintiff  availed 
himself  of  the  exclusive  right  infringed,  at  the  time  the  in- 
fringement took  place.  If  he  so  availed  himself,  by  granting 
licenses  to  others  to  do  the  things  which  the  defendant  did 
without  a  license,  then  that  difference  consists  in  his  not 
having  received  the  royalty  which  such  a  license  would  have 
brought  him.8  If  he  so  availed  himself,  by  keeping  his  patent 
right  a  close  monopoly  and  granting  licenses  to  no  one,  then 
that  difference  consists  of  the  money  he  would  have  realized 
from  such  a  close  monopoly  if  the  defendant  had  not  infringed, 
but  which  that  infringement  prevented  him  from  receiving.4 
Therefore,  there  are  several  methods  of  assessing  damages  for 
infringements  of  patents.  One  of  those  methods  consists  in 
using  the  plaintiff's  established  royalty  as  the  measure  of  those 
damages  ;  and  another  consists  in  ascertaining  those  damages 
J)y  ascertaining  what  the  defendant's  interference  with  the 
plaintiff's  close  monopoly  prevented  the  latter  from  deriving 
therefrom.*  It  is  convenient  to  consider  these  two  criteria  of 

1  Seymour  v.  McCormick,  16  How-  ard,  480, 1853;  New  York  v.  Ransom, 

ard,  480,  1853;  New  York  v.  Ransom,  23    Howard,  487,  1859;    Philip    v. 

23  Howard,  487,  1859  ;  Packet  Co.  Nock,    17   Wallace,   462,    1873. 

v.  Sickles,  19  Wallace,  611,  1873.  «  Philip  v.  Nock,  17  Wallace,  462, 

*  Emerson    v.     Simm,   6    Fisher,  1873  ;  McComb  v.  Brodie,  1  Woods, 

281,  1873  ;  Dental  Vulcanite  Co.  v.  153,  1871. 

Van  Antwerp,  2  Bann.  &  Ard.  255,  *  Zane  u.  Peck,  13  Fed.  Rep.  475, 

1876.  1882. 

8  Seymour  v.  McCormick,  16  How- 


CHAP.   XIX.]  DAMAGES.  389 

damages  separately,  and  in  the  order  in  which  they  have  been 
stated. 

§  556.  Koyalties,  as  measures  of  damages,  are  sometimes 
objected  to  by  defendants,  and  sometimes  by  plaintiffs.  When 
invoked  by  a  plaintiff,  a  royalty  is  liable  to  one  class  of  tests, 
applied  on  behalf  of  the  defendant ;  and  when  invoked  by  a 
defendant  to  limit  the  plaintiff's  recovery,  it  is  liable  to  another 
class  of  tests,  applied  on  behalf  of  the  plaintiff. 

§  557.  A  defendant  may  successfully  object  to  a  given 
royalty,  as  a  measure  of  the  plaintiff' s  damages,  unless  it  was 
uniform,  and  was  actually  paid  or  secured  before  the 
defendant's  infringement  was  committed,  by  a  sufficient  num- 
ber of  persons  to  show  that  people  who  have  occasion  to 
purchase  a  license  under  the  patent  can  afford  to  pay  that 
royalty.  The  sale  of  a  single  license  is  not  sufficient  to 
establish  a  royalty  ; '  because  one  purchaser  may  give  a  larger 
sum  for  a  license  than  he  or  any  other  can  afford  to  pay  ; 
whereas  such  a  business  error  is  not  likely  to  be  made  by  a 
considerable  number  of  persons  when  buying  licenses  under  the 
same  patent.  The  unanimous  opinion  of  twelve  average  men 
is  thought  to  be  the  most  reliable  criterion  of  guilt  or  in- 
nocence ;  but  no  reasonable  person  would  hold  that  view  of 
the  opinion  of  any  one  of  the  twelve.  In  like  manner,  the 
unanimous  acquiescence  of  a  considerable  number  of  men  in  a 
particular  royalty,  is  evidence  of  its  substantial  justice  ;  while 
the  acquiescence  of  one  only,  of  the  same  men,  would  have  no 
convincing  force. 

The  amount  of  the  royalty  relied  upon,  must  have  been 
actually  paid  or  secured  by  the  licensees,  in  order  to  make  it  a 
measure  of  damages  against  other  infringers.  Were  the  rule 
otherwise,  there  would  be  no  safeguard  against  collusion 
between  patentees  and  licensees  for  the  purpose  of  imposing  on 
infringers  and  other  third  parties.  It  follows  that  the  mere 
production  of  a  quantity  of  licenses,  purporting  to  have  been 
granted  at  a  certain  rate,  cannot  establish  a  royalty  at  that  rate. 
Somebody  must  make  oath  that  the  ostensible  price  of  the 

• 
1  Judson  v.  Bradford,  3  Bann.  &  Ard.  549,  1878. 


390  DAMAGES.  [CHAP.  xix. 

licenses  was  their  true  price,  before  they  can  have  that  effect. 
The  oath  and  not  the  license  being  the  best  evidence  of  the 
royalty,  the  royalty  may  be  proven  by  the  oath  without  the 
production  of  the  license,  even  where  the  license  is  in  writing. 
This  rule  is  also  dcducible  by  analogy  from  the  rule  that  a  pay- 
ment of  money  may  be  proven  by  oral  testimony,  even  though 
a  receipt  be  taken.1 

A  royalty,  in  order  to  be  binding  on  a  defendant  who  was 
a  stranger  to  the  licenses  which  established  it,  must  be  a  uni- 
form royalty.  This  rule  does  not  imply  that  a  patentee  may 
not  change  the  rate  of  his  royalty  as  often  as  he  can  get  a 
sufficient  number  of  licensees  to  acquiesce  in  such  a  change  ; 
but  it  does  exclude  from  consideration,  all  such  licenses  as 
were  given  at  variant  rates,  for  no  better  reason  than  variant 
ability  on  the  part  of  the  licensees  to  negotiate  for  a  license, 
or  to  resist  a  suit  for  infringement.8 

So  also,  a  particular  royalty  may  be  successfully  objected  to 
by  a  defendant,  if  it  was  not  established  till  after  the  infringe- 
ment sued  upon  was  committed.8  And  it  is  probable  that  a 
defendant  may  avoid  the  application  of  a  particular  royalty, 
by  showing  that  a  different  rate  was  established  in  the  particu- 
lar city,  county,  or  State  wherein  he  unlawfully  availed  him- 
self of  the  patentee's  invention. 

§  558.  A  plaintiff  may  successfully  object  to  a  particular 
royalty  as  a  measure  of  his  damages,  where  that  royalty  was 
established,  and  was  intended  to  be  established,  within  a 
particular  territory  only  ;  or  where  it  was  changed  or 
abandoned  before  the  infringement  in  suit  was  committed. 
These  two  points  rest  upon  obvious  reasons.  A  patentee 
may  wish  to  hold  a  close  monopoly  on  his  invention  in  Maine, 
while  willing  to  grant  licenses  in  Florida  ;  or  he  may  right- 
fully demand  a  much  larger  royalty  in  Minnesota,  than  that 
which  he  is  willing  to  accept  in  Texas  or  in  Oregon.  In  such 
a  case,  it  is  clear  that  his  Oregon  royalty  is  not  to  be  forced 


1  Greenleaf  on  Evidence,  Section      1877. 

90.         .  "Emigh  v.   Railroad  Co.,  6  Fed. 

«  Black  u.  Munson,  14  Blatch.  268,      Rep.  284,  1881. 


CHAP.   XIX.]  DAMAGES.  391 

upon  him  for  infringement  committed  in  Minnesota  ;  and 
that  his  business  in  Maine  is  not  to  be  ruined  by  infringers 
who  have  nothing  worse  to  fear  at  the  end  of  a  suit  than  the 
payment  of  a  royalty  like  that  established  in  Florida.  So 
also,  it  has  often  happened,  and  may  happen  again,  that  an  in- 
ventor is  forced  by  poverty,  or  other  misfortune,  to  accept 
inadequate  royalties  during  the  earlier  years  of  his  exclusive 
right.  In  such  a  case,  it  is  clear  that  he  ought  to  be  permitted 
to  increase  the  rate  whenever  he  can  get  licensees  to  consent 
thereto  ;  or  to  abandon  his  royalty  altogether  and  hold  a  close 
monopoly  on  his  invention,  as  far  as  he  can  do  so  consistently 
with  licenses  outstanding. 

§  559.  Money  paid  for  infringement  already  committed  does 
not  establish  nor  tend  to  establish  a  royalty.1  A  price  paid 
to  compromise  a  pending  action,  or  an  existing  right  of  action, 
may  sometimes  be  larger,  and  sometimes  be  smaller,  than  a 
proper  royalty  would  be.  It  may  be  larger,  where  the  in- 
fringer  is  a  person  who  is  disinclined  to  litigation,  or  where 
he  has  some  reason  to  fear  a  judgment  for  triple  damages,  or 
where  the  compromise  releases  him,  not  only  from  damages, 
but  also  from  all  rights  of  action  for  inf ringer's  profits.  It  may 
be  smaller,  where  the  infringer  is  presumably  insolvent,  or 
where  the  amount  involved  is  too  small  to  justify  the  expense 
incident  to  its  collection  by  an  action  at  law. 

§  560.  A  royalty  which  is  reserved  as  the  whole  or  a  part 
of  the  purchase  price  of  a  patent,  is  not  a  proper  one  to  mea* 
sure  damages  as  against  an  inf  ringer.3  It  may  be  too  large, 
or  it  may  be  too  small  for  that  purpose.  It  will  be  too  large, 
when  the  patent  is  of  such  a  nature  that  the  buyer  can  afford 
to  pay  more  for  a  close  monopoly,  than  for  a  license  to  com- 
pete with  other  licensees.  It  will  be  too  small,  where  it  is  for 
the  interest  of  the  owners  of  the  patent  to  subdivide  the  right 
to  practise  the  invention.  In  the  latter  class  of  cases,  the 
buyer,  in  order  to  get  paid  for  introducing  the  invention  and. 


1  Black  v.  Munson,  14  Blatch.  268,  Spangenberg,  14  Fed.  Rep.  350,  1882. 
1877;  Greenleaf  v.  Mfg.  Co.,  17  2  La  Baw  v.  Hawkins,  2  Bann.  & 
Blatch.  253,  1879  ;  Matthews  v.  Ard.  564,  1877.. 


392  DAMAGES.  [CHAP.  xix. 

retailing  the  licenses,  must  sell  them  at  a  higher  rate  than 
that  which  he  pays  to  the  patentee. 

§  561.  A  royalty  provided  for  in  licenses  to  make  and  use, 
is  no  measure  of  damages  for  an  infringement  which  consisted 
of  making  and  selling  the  patented  thing  ;  nor  is  a  royalty 
which  was  established  by  licenses  to  make  and  sell  specimens 
of  the  invention  covered  by  a  patent,  any  criterion  of  the 
injury  which  may  have  been  inflicted  on  the  pecuniary 
interests  of  the  owner,  by  unlawfully  making  and  using  such 
specimens.  These  rules  rest  upon  undeniable  reasons.  The 
value  of  some  patents  resides  almost  entirely  in  the  exclusive 
right  to  make  and  sell,  while  that  of  others  consists  almost 
wholly  in  the  exclusive  right  to  make  and  use,  the  inventions 
which  they  respectively  cover. 

§  562.  In  measuring  damages  with  a  royalty,  due  regard 
must  be  had  to  proportion.  Where  an  infringement  was 
smaller  in  extent,  or  shorter  in  duration,  than  the  correspond- 
ing doings  which  were  authorized  by  the  licenses  which 
established  the  royalty,  it  is  but  just  that  the  damages  should 
be  assessed  at  a  correspondingly  smaller  sum,  unless  there  are 
special  facts  in  the  case  which  render  the  particular  extent  of 
the  infringement  immaterial  to  the  plaintiff.1  In  like  man- 
ner, damages  will  amount  to  a  sum  correspondingly  larger 
than  the  royalty  which  constitutes  their  criterion,  when  the 
infringement  in  suit  was  larger  or  was  longer  than  the  doings 
authorized  by  the  licenses  which  established  the  royalty. 

§  563.  Where  no  established  royalty  is  applicable  as  a  mea- 
sure of  the  damages  caused  by  a  particular  infringement,  those 
damages  may  sometimes  be  ascertained  by  the  second  method  : 
that  is,  by  finding  what  the  plaintiff  would  have  derived  from 
his  monopoly  if  the  defendant  had  not  interfered,  but  which 
he  failed  to  realize  because  of  that  interference  with  his  rights. 
Where  the  owner  of  a  patent  is  able  to  supply  the  whole 
demand  for  the  thing  it  covers  or  produces,  and  where  the 
whole  demand  would  go  to  him  if  not  diverted  by  some  in- 

1  Birdsall  v.  Coolidge,  93  U.  S.  70,  and  Ard.  549,  1878  ;  Wooster  u. 
1876  ;  Judson  v.  Bradford,  3  Bann.  Simonson,  16  Fed.  Hep.,  680,  1883. 


CHAP.   XIX.]  DAMAGES.  393 

fringer,  it  is  clear  that  the  injury  caused  by  a  particular  in- 
fringer can  be  ascertained  by  finding  what  pecuniary  advan- 
tage the  owner  of  the  patent  would  have  derived  if  he  had 
supplied  that  portion  of  the  demand  which  was  supplied  by 
that  infringer.  The  two  conditions  of  this  rule  are  pre- 
requisites of  its  applicability.  The  highest  authority  has  an- 
nounced that  :  "  What  a  patentee  would  have  made  if  the 
infringer  had  not  interfered  with  his  rights,  is  a  question  of 
fact,  and  not  a  judgment  of  law."  '  In  order  to  show  that  a 
patentee  would  in  fact  have  made  a  particular  profit,  if  an 
infringer  had  not  forestalled  his  sales,  it  is  necessary  to  show 
that  he  would,  but  for  that  infringer,  have  made  those  sales  ; 
and  to  that  end  it  is  necessary  to  show  that  he  could  have  sup- 
plied the  articles  wanted,  and  that  the  persons  wanting  those 
articles  would  have  bought  them  of  him  had  no  infringer  in- 
terfered.8 "Where  those  facts  are  proven,  the  damages  of  the 
patentee  will  consist  of  the  profits  which  he  would  have 
derived  from  the  sales  made  by  the  infringer,  if  the  patentee 
had  made  those  sales  ;  supplemented  by  the  amount  of  what- 
ever reduction  of  prices  the  patentee  was  compelled,  by  the 
defendant's  competing  infringement,  to  make  even  upon  the 
goods  which  he  did  sell.3  "Where  it  does  not  appear  that  the 
owner  of  a  patent  could  and  would  have  supplied  the  demand 
which  was  supplied  by  an  infringer,  even  if  no  infringer  had 
interfered,  this  last  mentioned  element  of  damages  may  still 
be  proven,  and  a  verdict  be  founded  upon  it  alone.  But  in 
order  to  constitute  either  a  part  or  the  whole  of  the  foundation 
of  a  verdict,  proof  of  hurtful  competition  must  include  evi- 
dence that  it  was  the  defendant's  infringement  that  caused  the 
reduction  of  prices,  and  also  evidence  of  the  extent  of  the  re- 
duction so  caused.4 

Where  damages  cannot  be  assessed  on  the  basis  of  a  royalty, 
nor  on  that  of  lost  sales,  nor  on  that  of  hurtful  competition, 

1  Seymour  v.  McCormick,  16  How-  gent  v.  Mfg.  Co.  17  Blatch.  247, 1879. 

ard,  490,  1853.  "  Fitch    v.   Bragg,    16  Fed.  Rep. 

8  Goodyear  v.  Bishop,  2  Fisher,  247,  1883. 

161,    1861  ;    Magic    Ruffle    Co.    v.  *  Ingersoll   v.  Musgrove,  3  Bann. 

Douglas,  2  Fisher,  340,  1863  ;  Bar-  &  Ard.,  304,  1878. 


39-t  DAMAGES.  [CHAP.  xix. 

the  proper  method  of  assessing  them  is  to  ascertain  what  would 
have  been  a  reasonable  royalty  for  the  inf ringer  to  have  paid.1 
In  determining  this  point,  the  utility  and  cheapness  of  the 
patented  thing,  as  compared  with  other  things  known  at  the 
time  of  the  infringement,  and  capable  of  doing  similar  work, 
will  always  be  the  leading  guides. 

§  564.  Damages  for  infringement  by  making,  without  un- 
lawfully selling  or  using,  specimens  of  a  patented  thing  will 
be  nominal  only,8  unless  there  is  an  established  royalty  for 
such  making,  or  unless  such  making  is  followed  by  using  or 
selling  in  a  foreign  country,  or  is  followed  by  using  or  selling 
in  this  country  after  the  expiration  of  the  patent.  Where  an 
infringer  made  specimens  of  a  thing  covered  by  a  patent,  and 
afterward  sold  or  used  them  in  a  foreign  country,  the  measure 
of  damages  is  whatever  royalty  has  been  established  for  a 
license  to  make  and  use  such  specimens  for  such  a  purpose.1 
Where  no  royalty  of  the  kind  has  been  established,  there  is 
generally  no  way  of  assessing  damages  in  such  a  case  other 
than  to  determine  what  a  reasonable  royalty  would  have  been. 
Damages  can  seldom  be  assessed  in  such  a  case  on  any  theory 
that  the  inf  ringer's  doings  interfered  with  the  patentee's  sales  ; 
because  it  will  generally  be  impossible  to  prove  that  the  foreign 
demand  would  otherwise  have  corne  to  the  patentee.  These 
considerations  seem  also  to  apply  to  cases  where  the  infringe- 
ment consisted  of  making  specimens  of  a  patented  thing  shortly 
before  the  expiration  of  the  patent,  with  a  view  to  using  or 
selling  them  shortly  after  that  event.  Such  a  scheme  of  pro- 
ceeding is  undoubtedly  injurious  to  a  patentee,  for  if  persons 
wait  till  after  the  expiration  of  a  patent  before  making  the 
articles  it  covers,  they  will  not  be  able  to  use  or  sell  those 
articles  till  some  time  still  later,  and  during  the  interval  the 
patentee  may  nearly  or  quite  maintain  his  former  command 
of  the  market. 

§  565.  The  evidence  of  damages  must  be  reasonably  definite, 

1  McKeever  v.  United   States,  23  419,  1871. 

Off.  Gaz.  1528,  1879.  »  Ketchum  Ha-vester  Co.  v.  John- 

8  Whittemore  v.  Cutter,  IGalliHon,  son  Harvester  Co.,  8  Fed.  Kep.  586, 

483, 1813  ;  Carter  v.  Baker,  4  Fisher  1881. 


CHAP.   XIX.]  DAMAGES.  395 

in  order  to  justify  a  jury  in  finding  a  verdict  for  more  than  a 
nominal  amount.  Conjecture  will  not  perform  the  office  of 
proof,  nor  can  imagination  take  the  place  of  calculation  in  this 
behalf. '  But  this  rule  is  not  to  be  used  to  defeat  the  ends  of 
justice.  It  may  happen  that  a  plaintiff  can  prove  the  measure 
of  his  damages  with  precision,  while  unable  to  prove  the  real 
extent  of  the  defendant's  infringement.  In  such  a  case,  the 
defendant  usually  can  remove  the  uncertainty,  because  he  is 
likely  to  know  or  be  able  to  ascertain  what  and  how  much  he 
has  done.  If  by  omitting  to  supply  the  information,  a  defend- 
ant could  avert  a  verdict  for  proper  damages,  he  could  easily 
defeat  a  meritorious  cause.  But  the  law  will  not  allow  itself  to 
be  thus  circumvented.  On  the  contrary,  it  is  the  rule,  that 
where  a  plaintiff  introduces  evidence  to  show  that  the  damages 
were  large,  and  to  show  the  amount  of  those  damages  as  ac- 
curately as  the  nature  of  the  case  permits  him  to  do,  and  where 
the  defendant  offers  no  evidence  upon  the  subject,  it  becomes 
the  function  of  the  jury  to  estimate  those  damages  as  best  they 
can  on  the  basis  of  the  plaintiff's  evidence.8  In  making  such 
an  estimate  a  jury  ought  to  resolve  every  point  of  uncertainty 
against  the  defendant,  for  he  had  it  in  his  power  to  give  them 
accurate  data  upon  which  to  compute. 

§  566.  Remote  consequential  damages  cannot  be  embodied 
in  a  verdict  for  an  infringement  of  a  patent.3  The  instances 
in  which  such  damages  have  been  claimed  are  but  few  ;  but 
they  are  likely  to  become  more  numerous  hereafter.  It  is 
therefore  proper  to  mention  such  injuries  as  will  probably  be 
held  to  fall  within  such  a  category. 

Pecuniary  injury  may  result  to  a  patentee  from  a  particular 
infringement,  in  that  it  caused  him  to  lose  sales  on  unpatented 
articles  usually  sold  with  the  patented  thing  in  question  ;  or 
in  that  it  so  unexpectedly  reduced  the  business  of  the  patentee 
as  to  make  it  necessary  for  him  to  sell  unpatented  property 
at  less  than  its  real  value,  or  to  borrow  money  at  more  than  a 
proper  rate  of  interest,  in  order  to  meet  his  pecuniary  engage- 

1  New  York  v.  Ransom,  23  Howard,        1846. 

487,  1859.  3  Carter  v.  Baker,  4  Fisher,  421, 

*  Stephens  v.  Felt,  2  Blatch.  38,       1871. 


396  DAMAGES.  [CHAP. 

merits  ;  or  in  that  it  encouraged  other  persons  to  infringe, 
from  whom,  by  reason  of  insolvency  or  other  obstacle,  no  re- 
covery can  be  obtained  ;  or  in  that  such  infringement  caused 
the  patentee  so  much  trouble  and  anxiety  that  he  incurred  loss 
from  inability  to  attend  to  other  business.  But  pecuniary 
injury  of  either  of  these  kinds  would  be  such  an  indirect  con- 
sequential matter  as  not  to  furnish  any  part  of  a  proper  basis 
for  recoverable  damages. 

§  567.  Exemplary  damages  cannot  lawfully  be  given  by  a 
jury  for  any  infringement  of  a  patent.1  The  meaning  of  this 
rule  is  that  juries  are  to  base  verdicts  on  plaintiff's  injuries, 
and  not  on  defendant's  ill-deserts.  Their  function  is  to  award 
compensation  to  the  injured,  not  punishment  to  the  injurer. 
The  power  to  inflict  punitive  damages  is  committed  by  the 
statute  to  the  judge.  He  may  exercise  that  power  by  entering 
a  judgment  for  any  sum  above  the  amount  of  the  verdict,  not 
exceeding  three  times  that  amount,  together  with  costs.8  The 
costs  are  to  be  added  to  the  increased  verdict,  and  the  judg- 
ment cannot  be  entered  for  a  sum  three  times  greater  than  the 
aggregate  of  the  verdict  and  the  costs  ;  and  if,  for  any  reason, 
no  costs  are  awarded  .to  the  plaintiff,  that  fact  neither  ousts 
the  power  of  the  court  to  enter  a  judgment  for  a  sum  larger 
than  the  verdict,  nor  constitutes  a  reason  for  exercising  that 
power  where  no  other  reason  exists.8  But  that  power  will  be 
exercised  where  the  defendant's  infringement  was  deliberate 
and  intentional,  even  though  it  may  have  been  committed 
under  an  erroneous  opinion  of  the  plaintiff's  rights  ; 4  or  where 
the  defendant  acted  in  bad  faith,  or  has  been  stubbornly 
litigious,  or  has  caused  unnecessary  trouble  and  expense  to 
the  plaintiff.6 

1  Wilbur  v.    Beecher,    2    Blatch.  3  Guyon  v.  Serrell,  1  Blatch.  246, 

143,  1850  ;  Hall  v.  Wiles.  2  Blatch.  1847. 

200,    1851  ;    Parker    v.    Hnlme,    1  4  Russell  v.  Place,  9  Blatch.  175, 

Fisher  56, 1849  ;  Haselden  v.  Ogden,  1871  ;  Peek  v.  Frame.  9  Blatch.  194, 

3    Fisher,    378,    1868  ;    Russell    u.  1871. 

Place,  5  Fisher,  134,  1871.  »  Day  v.  Woodworth,  13  Howard, 

4  Revised  Statutes,  Section  4919  ;  372,  1851  ;  Teese  v.  Huntingdon,  23 

Seymour  v.  McCormick,  16  Howard,  Howard,  2,  1859. 
489,  1853. 


CHAP.  XIX.]  DAMAGES.  397 

§  568.  Increased  damages  may  properly  be  awarded  by  a 
court,  where  it  is  necessary  to  award  them  in  order  to  prevent 
a  defendant  infringer  from  profiting  from  his  own  wrong, 
whether  that  wrong  was  intentional  or  was  unwitting.  The 
power  conferred  by  the  statute  is  general.  It  is  not  confined 
to  awarding  punitive  damages,  but  is  to  be  exercised  ' '  accord- 
ing to  the  circumstances  of  the  case. ' '  *  Among  the  circum- 
stances of  patent  cases,  is  the  fact  that  the  profits  which  de- 
fendants derive  from  their  infringements,  are  often  much 
larger  than  the  actual  damages  which  those  infringements 
cause  plaintiffs  to  sustain.  If,  in  such  a  case,  the  defendant  is 
forced  to  pay  no  more  than  the  actual  damages,  it  is  clear  that 
he  will  have  derived  advantage  from  his  own  wrong.  It  would 
be  an  imperfect  system  of  law  that  would  thus  put  a  premium 
upon  its  own  violation.  Prior  to  1882,  it  was  understood  that 
means  of  preventing  such  a  result  resided  in  an  option,  which 
it  was  said  every  patentee  had,  of  suing  at  law  for  his  dam- 
ages, or  in  equity  for  the  inf ringer's  profits."  But  in  that 
year,  that  doctrine  was  set  aside  by  the  Supreme  Court,  and 
the  jurisdiction  of  equity  was  denied  to  a  large  class  of  cases 
which  would  be  entitled  to  such  a  jurisdiction  under  such  a  rule.* 
In  a  case  where  no  injunction  happens  to  be  proper,  and 
wherein  the  defendant's  profits  are  larger  than  the  plaintiff's 
damages,  there  is  now  no  certain  means  of  preventing  the  de- 
fendant from  deriving  advantage  from  his  own  wrong,  other 
than  that  which  resides  in  the  power  of  the  court  to  enter  a 
judgment  for  a  larger  sum  than  the  actual  damages  found  in 
the  verdict.  That  being  the  only  certain  means  of  making 
infringement  unprofitable  to  inf ringers,  it  may  well  be  freely 
used  for  that  purpose  by  the  Federal  courts.4 

§  569.  A  verdict  for  actual  damages  cannot  be  averted  by 
evidence  that  the  defendant  was  ignorant  of  the  existence  of 

1  Revised  Statutes,  Section  4919.  Administrators,  1  Bann.  &  Ard.  117, 

'  Tucker  v.  Spalding,  13  Wallace,  1874. 

453,  1871  ;  Birdsall  v.  Coolidge,  93  3  Boot  v.  .Railway  Co.,  106  U.  S. 

U.  S.,  68,  1876  ;  Perry  v.  Corning,  189.  1881. 

6  Blatch.  134, 1868  ;  Howes  v.  Nute,  4  See  Sections  419  and  420  of  this 

4  Cliff.  174, 1870;  Cowing  v.  Rumsey,  book. 
8  Blatch.  36,  1870  ;  Smith  v.  Baker's 


398  DAMAGES.  [CHAP.  xix. 

the  patent  at  the  time  he  infringed.1  All  inf ringers  have 
constructive  notice  of  all  patents,  because  all  letters  patent  are 
recorded  in  the  Patent  Office.  There  is  no  more  hardship  in- 
volved in  the  rule  that  infringers  are  bound  to  take  notice  of 
patents,  than  there  is  in  the  rule  that  buyers  of  land  are  bound 
to  take  notice  of  the  real  estate  records,  or  in  the  rule  that  all 
citizens  are  bound  to  take  notice  of  the  laws  of  their  country. 
The  amount  of  pecuniary  injury  which  an  infringement  causes 
a  patentee  is  not  affected  by  the  fact  that  the  infringer  did  not 
know  of  the  existence  of  the  patent  which  he  infringed  ;  and 
where  one  man  has  obtained  possession,  through  his  own  mis- 
take, of  the  fruits  of  the  property  of  another,  it  is  better  that 
he  be  compelled  to  relinquish  them,  than  that  the  true  owner 
be  prevented  from  enjoying  the  proceeds  of  his  own  estate. 

§  670.  Neither  counsel  fees  nor  any  other  expenses  incident 
to  litigation  can  be  included  in  a  verdict  for  actual  damages  in 
a  patent  case."  There  is  no  more  reason  for  allowing  a  suc- 
cessful plaintiff  to  recover  such  items,  than  there  is  for  giving 
a  similar  recovery  to  a  successful  defendant.  Certain  expended 
fees  may  be  recovered  as  costs  by  either  ;  but  no  expenditures 
or  costs  can  be  recovered  as  damages. 

§  571.  Interest  should  be  allowed  on  royalties,  from  the 
time  those  royalties  ought  to  have  been  paid,  in  all  cases  where 
a  royalty  is  the  measure  of  the  plaintiff's  damages.'  In  such 
a  case  the  damages  are  liquidated  at  such  time  as  the  royalty 
would  have  been  due,  if  the  defendant  had  elected  to  purchase 
instead  of  to  infringe  the  right  to  use  the  invention  in  suit. 
!No  interest  is  due  on  damages  measured  otherwise  than  by  a 
royalty,  because  such  damages  are  unliquidated  until  they  are 
ascertained  by  an  action.4 

1  Emerson  v.  Simm,  6  Fisher,  brook  v.  Small,  3  Bann.  &  Ard.,  626, 

281,  1873.  1878. 

*  Day  v.  Woodworth,  13  Howard,  8  McCormicku.  Seymour,  3  Blatch. 

373,  1851  ;  Teese  v.  Huntington,  23  222,  1854  ;  Goodyear  v.  Bishop,  2 

Howard,  8,  1859  ;  Philip  v.  Nock,  17  Fisher,  162,  1861  ;  Locomotive 

Wallace,  462,  1873  ;  Whittemore  v.  Safety  Truck  Co.  v.  Pennsylvania 

Cutter,  1  Gallison,  429,  1813  ;  Stimp-  Railroad  Co.  2  Fed.  Rep.,  682,  1880. 

son  v.  The  Rail  Roads,  1  Wallace,  Cir-  4  Gilpin  v.  Consequa,  3  Washing- 

cuit  Court  Reports,  164,  1847  ;  Hoi-  ton,  194,  1813. 


CHAPTER  XX. 


ACTIONS  IN  EQUITY. 


572.  Jurisdiction  of  equity  in  patent 
causes. 

573.  Jurisdiction  of  equity  to   as- 
sess and  decree  damages. 

574.  The  complainant. 

575.  The  defendant. 

576.  Original  bills. 

577.  The  title  of  the  court. 

578.  The  introductory  part. 

579.  The  stating  part. 

580.  The  prayer  for  relief. 

581.  The  interrogating  part. 

582.  The  prayer  for  process. 

583.  The  signature. 

584.  The  oath. 

585.  Bills  to  perpetuate  testimony. 

586.  Amendments  to  bills,  when  al- 
lowed. 

587.  Amendments    to    bills,    when 
necessary. 

588.  Demurrers,  pleas,  and  answers. 

589.  Pleas  in  equity. 

590.  Arguments    upon    pleas,    and 
replications  to  pleas. 

591.  Defences  in  equity  cases. 

592.  Non-jurisdiction  of  equity. 
693.  The  same  subject  continued. 

594.  Non-jurisdiction  in  equity,  how 
set  up  as  a  defence. 

595.  Prior    adjudication  at    law   is 
not  necessary  to  jurisdiction  in 
equity. 

596.  Laches. 

597.  Laches,  how  set  up. 

698.  The  first  of  the  twenty-seven 
defences. 

699.  The  second  defence. 


'  600.  The  third  defence. 

601.  The  fourth  defence. 

602.  The  fifth  and  sixth  defences. 

603.  The  seventh  defence. 

604.  The  eighth  defence. 

605.  The  ninth  and  tenth  defences. 

606.  The  eleventh  defence. 

607.  The  twelfth  defence. 

608.  The  thirteenth  defence. 

609.  The  fourteenth  defence, 

610.  The  fifteenth  defence. 

611.  The  sixteenth  defence. 

612.  The  seventeenth  defence. 

613.  The  eighteenth  defence. 

614.  The  nineteenth  defence. 

615.  The  twentieth  defence, 

616.  The  twenty-first  defence. 

617.  The  twenty-second  defence. 

618.  The  twenty-third  defence. 

619.  The  twenty-fourth  defence. 

620.  The  twenty-fifth  defence. 

621.  The  twenty-sixth  defence. 

622.  The  twenty-seventh  defence. 

623.  Replications. 

624.  Subordinate    bills    in    aid    of 
original  bills. 

625.  Supplemental  bills. 

626.  Bills  in  the  nature  of  supple- 
mental bills. 

627.  Bills  of  revivor. 

628.  Bills  in  the  nature  of  bills  of 
revivor. 

629.  Bills   of    revivor  and    supple- 
ment. 

630.  Leave  of  court  to  file  supple- 
mental bills,  and  bills  in  the 
nature  of  supplemental  bills. 


400 


ACTIONS    IN    EQUITY. 


[CHAP.  xx. 


631.  Demurrers,  pleas,  and  answers 
to  supplemental   bills    and    to 
bills  in  the  nature  of  supple- 
mental bills. 

632.  Hearings. 

633.  Interlocutory  hearings. 

634.  Questions  of    law    arising    on 
hearings. 

635.  Questions   of    fact  arising    on 
hearings. 

636.  Evidence  in  support  of  the  bill. 

637.  Evidence    in    support    of    de- 
fences. 

638.  Testimony. 

639.  Depositions. 

640.  Depositions    taken    in    other 
cases. 

641.  Documentary  evidence. 

642.  Trial  by  jury  in  equity  cases. 

643.  Hearings   by  masters  in  chan- 
cery. 

644.  Interlocutory  decrees. 


645.  Petitions  for  rehearings. 

646.  Behearings  for  matter  apparent 
on  the  record. 

647.  Kehearings  on  account  of  newly 
discovered  evidence. 

648.  Supplemental  bills  in  the  na- 
ture of  bills  of  review. 

649.  Final  decrees. 

650.  Bills  of  review. 

651.  Bills  of  review  to  correct  errors 
apparent   on  the   pleadings   or 
final  decree. 

652.  Bills  of    review  to    introduce 
evidence    discovered   after   the 
entry  of  the  final  decree. 

653.  Bills  in  the  nature  of  bills  of 
review. 

654.  Appeals. 

655.  Hearings  on  appeals. 

656.  Decisions  on  appeals. 

657.  Certificates  of  division  of  opin- 
ion. 


§  572.  JURISDICTION  in  equity,  in  patent  litigation,  is  con- 
ferred upon  the  same  courts  that  are  authorized  to  exercise 
jurisdiction  at  law,  in  that  branch  of  jurisprudence.1  The 
two  kinds  of  jurisdiction  are  kept  as  distinct  in  those  courts, 
as  if  they  were  conferred  upon  different  tribunals.  Equitable 
relief  cannot  be  had  in  any  action  at  law  ;  and  legal  relief 
cannot  be  had  in  any  action  in  equity,  except  as  incidental 
to  some  equitable  relief  granted,  or  at  least  rightfully  pray- 
ed for,  therein.  The  only  function  of  actions  at  law  in 
patent  cases,  is  to  give  damages  for  past  infringements  of 
patents.  The  principal  function  of  actions  in  equity  in 
such  cases,  is  to  restrain  future  infringements  of  patents, 
by  means  of  the  writ  of  injunction.  In  every  case  where 
an  injunction  is  proper,  a  court  of  equity,  in  order  to  avoid 
a  multiplicity  of  actions,  will  take  an  account  of  the  profits 
which  the  defendant  derived  from  infringing  the  complain- 
ant's patent,  and  will  compel  the  defendant  to  pay  their 
amount  to  the  complainant.  And  equity  has  jurisdiction,  in- 


1  Bevised  Statutes,  Sections  629  and  4921.     Section  379  of  this  book. 


CHAP.  XX  ]  ACTIONS   IN    EQUITY.  401 

dependent  of  any  injunction  or  right  to  an  injunction,  to 
grant  this  relief  relevant  to  profits,  in  all  patent  cases  wherein 
some  impediment  prevents  a  resort  to  remedies  purely  legal, 
or  wherein  special  circumstances  render  the  remedy  obtain- 
able by  an  action  at  law,  difficult,  inadequate,  or  incomplete.1 

§  573.  Wherever  equity  has  jurisdiction  to  decree  an  ac- 
count of  the  defendant's  profits,  it  also  has  jurisdiction  to  as- 
sess the  damages  which  the  complainant,  sustained  on  account 
of  the  defendant's  infringement.2  Having  ascertained  the 
amount  of  both,  if  the  profits  are  found  to  equal  or  exceed  the 
damages,  the  court  will  enter  a  decree  for  their  recovery,  and 
will  do  nothing  further  about  the  damages.3  Where  the  ac- 
counting shows  no  such  profits,  but  does  show  such  damages, 
the  court  will  enter  a  decree  for  the  amount  of  the  latter,  and 
will  do  no  more.4  Where  the  accounting  shows  both  profits 
and  damages,  and  shows  the  latter  to  be  the  larger  of  the  two, 
a  decree  will  be  entered  for  that  larger  sum  alone.5  The 
statutory  provision  which  enables  a  court  of  equity  to  assess 
damages  in  a  patent  case  originated  in  1870.'  It  was  a  new 
remedial  provision  of  the  Consolidated  Patent  Act  of  that 
date,  and  was  expressly  made  applicable  to  all  suits  thereafter 
commenced,  even  on  rights  of  action  which  theretofore  ac- 
crued.' In  assessing  damages,  equity  follows  the  law,8  and  is 
guided  by  the  rules  and  principles  which  are  set  forth  in 
Chapter  XIX.  of  this  book. 

§  574.  The  complainant  in  an  action  in  equity  for  an  in- 
fringement of  a  patent  may  be  the  holder  of  the  complete 
title  to  that  patent  in  the  territory  where  the  infringement  oc- 
curred. Where  the  legal  title  resides  in  one  person  and  the 

1  Root  v.  Railway  Co.   105  U.  S.  Sec.  55,  p.  206. 

189,  1881.  '  16  Statutes   at   Large,   Ch.  230, 

s  Revised  Statutes,  Section  4921.  Sec.  Ill,  p.  216 ;  Union  Paper  Bag 

3  Emigh  v.    Railroad   Co.   G   Fed.  Machine  Co.   v.   Newell,  11  Blatch. 
Rep.  283,  1881.  383,  1873. 

4  Marsh  v.  Seymour,  97  U.  S.  348,  8  Bancroft  v.  Acton,  7  Blatch.  506V 
1877.  1870  ;  Locomotive  Safety  Truck  Co. 

6  Star  Salt  Caster  Co.  v.  Grossman,  v.  Pennsylvania  Railroad  Co.  2  Fed, 
4  Bann.  &  Ard.  566,  1879.  Rep.  682,  1880. 

•16  Statutes  at   Large,   Ch.   230, 


402  ACTIONS    IN    EQUITY. 

equitable  title  in  another,  both  should  generally  join  in  such 
an  action.1  But  the  holder  of  the  legal  title  may  be  dispensed 
with  as  co-complainant,  where  the  circumstances  of  the  case 
are  such  that  a  decree  against  the  equitable  owner  would 
clearly  be  pleadable  against  the  holder  of  the  legal  title.1 
Where  an  equitable  owner  brings  an  action  in  equity  in  the 
name  of  the  holder  of  the  legal  title  alone,  the  defendant  may, 
by  means  of  a  motion  to  the  court,  compel  the  equitable 
owner  to  become  a  co-complainant  in  his  own  name."  But 
where  a  defendant  moves  to  make  a  stranger  to  a  suit,  co-com- 
plainant therein,  on  the  ground  that  he  has  an  equitable  in- 
terest in  the  matter  involved,  the  motion  will  be  overruled  if 
the  person,  so  sought  to  be  brought  in,  files  in  the  case  a  dis- 
claimer of  all  interest  in  the  subject  of  the  litigation.4 

§  575.  The  defendant  in  an  action  in  equity  for  an  infringe- 
ment of  a  patent,  may  generally  be  any  person  or  private  cor- 
poration connected  with  that  infringement.  Questions  rele- 
vant to  the  liability  of  public  corporations  to  such  actions, 
and  relevant  to  the  respective  liability  of  joint  infringers  when 
sued  in  equity,  and  indeed  relevant  to  numerous  points  in  the 
subject  of  parties,  are  explained  and  answered  in  the  chapter 
on  courts  parties  and  causes  :  the  seventeenth  chapter  of  this 
book. 

§  576.  An  original  bill  in  an  action  in  equity,  for  an  in- 
fringement of  a  patent,  properly  consists  of  six  parts  :  1.  The 
title  of  the  court.  2.  The  introduction.  3.  The  stating 
part.  4.  The  prayer  for  relief.  5.  The  interrogating  part. 
6.  The  prayer  for  process.  Anciently  it  was  the  custom  to 
insert  in  all  original  bills  in  equity,  three  additional  parts  : 
the  confederacy  part,  the  charging  part,  and  the  jurisdic- 
tion part.  But  these  are  no  longer  required  in  United  States 
courts.  *  The  confederacy  part,  if  used  when  only  one  person 

1  Stimpson   v.   Rogers,   4  Blatch.  *  Graham  v.  Mfg.  Co.  11  Fed.  Hep. 

336,  1859.  148,  1880. 

s  Littlefield  v.  Perry,  21  Wallace,  *  Rules  of  Practice  for  the  Courts 

222,  1874.  of  Equity  of  the  United  States,  Rule 

3  Patterson  v.  Stapler,  7  Fed.  Rep.  21. 
:210,  1881. 


CHAP.   XX.]  ACTIONS   IN    EQUITY.  403 

has  infringed  and  is  sued,  is  entirely  out  of  place  ;  and  even 
where  the  bill  is  filed  against  joint  infringers,  such  a  part  is 
still  entirely  useless.  The  charging  part  is  also  unnecessary, 
because  the  complainant  is  entitled  to  amend  his  bill,  if  the 
answer  renders  it  necessary  for  him  to  plead  specially  to  any 
defence  it  contains.1  And  such  a  part  is  objectionable,  be- 
cause it  notifies  the  defendant  of  the  complainant's  reply  to  the 
defendant's  defence,  and  thus  enables  the  latter  to  concert  his 
answer  with  more  craftiness  than  he  otherwise  could.  And 
the  jurisdiction  part  is  useless,  because,  if  the  facts  stated  in 
the  bill  do  not  give  equity  jurisdiction,  the  fault  cannot  be 
cured  by  alleging  that  they  do  ;  and  if  those  facts  do  lay  a 
foundation  for  jurisdiction  in  equity,  they  will  speak  for  them- 
selves, and  will  require  no  label  such  as  was  anciently  tacked 
to  them  in  the  form  of  a  jurisdiction  part.  That  part  of  an 
ancient  bill  in  equity  originated  in  England  when  the  chancel- 
lors were  priests  and  not  lawyers,  and  when  they  therefore  re- 
quired to  be  told  that  the  common  law  could  not  give  the 
relief  prayed  for  in  the  bill.  Some  pleaders  still  insert  one  or 
all  of  these  three  ancient  parts  in  a  bill  in  equity,  but  neither 
of  them  can  have  any  beneficial  effect  upon  the  cause,  and  all 
of  them  are  better  omitted  than  used. 

§  577.  The  title  of  the  court,  at  the  beginning  of  a  bill, 
should  be  in  the  same  form  as  at  the  beginning  of  a  declara- 
tion.* It  is  technically  unscientific  to  entitle  a  bill  in  the 
name  of  the  case,  because  until  the  bill  is  filed  there  is  no  such 
case  pending.  But  such  a  title  is  convenient,  in  order  to  show 
at  a  glance  who  are  the  parties  ;  and  convenience  may  prop- 
erly outweigh  technical  nicety.  It  is  therefore  exceptional 
to  see  a  bill  that  is  not  entitled  in  the  name  of  the  case. 

§  578,  The  form  of  the  introductory  part  is  prescribed  by 
the  Supreme  Court.8  It  contains  a  formal  address  to  the 
judges  of  the  court  in  which  the  bill  is  to  be  filed,  together 
with  the  names  and  citizenship  of  the  parties. 

§  579.  The  stating  part  of  a  bill  in  equity,  though  differing 
in  form  from  the  statement  of  the  cause  of  action  in  a  declara- 

1  Equity  Rule  45.          ">  Section  422  of  this  book.          »  Equity  Kule  20. 


404  ACTIONS    IN    EQUITY.  [CHAP.   XX. 

tion  at  law,  agrees  with  the  latter  in  substance,  except  in  the 
following  particulars.  It  may  state  infringements  which  were 
committed  before  the  complainant  obtained  his  title,  provided 
that  title,  when  obtained,  covered  the  right  of  action  for  those 
infringements.  It  need  not  aver  that  any  damage  was  incur- 
red by  the  complainant,  if  the  action  is  brought  for  an  injunc- 
tion only,  or  for  an  injunction  and  an  account  of  the  defend- 
ant's profits.  Where  the  bill  prays  for  a  preliminary  injunc- 
tion, its  stating  part  must  set  forth  one  or  more  of  the  grounds 
for  that  relief,  which  are  explained  in  the  chapter  on  injunc- 
tions ; '  and  when  profits  are  sought  to  be  recovered,  it  must 
plainly  aver  that  profits  were  realized  by  the  defendant  on 
account  of  the  stated  infringement.  This  last  allegation  has 
heretofore  been  sometimes  omitted  from  bills  in  patent  cases, 
but  the  omission  would  always  have  been  a  fatal  one,  if  the  de- 
fendants had  availed  themselves  of  it.  The  necessity  for  such  an 
allegation  follows  from  the  rule  of  patent  law  that  where  a  par- 
ticular infringer  made  no  profits  from  his  infringement,  no 
profits  can  be  recovered  from  him  ; *  and  from  the  rule  of 
equity  pleading,  that  every  fact  which  is  necessary  to  entitle  a 
complainant  to  the  relief  for  which  he  prays,  must  be  distinctly 
and  expressly  averred  in  the  stating  part  of  his  bill.8 

§  580.  The  prayer  for  relief  should  be  both  special  and 
general.4  The  special  part  should  ask  for  a  preliminary  in- 
junction, and  for  a  permanent  injunction,  and  for  an  account 
of  the  defendant's  profits,  and  for  an  assessment  of  the  com- 
plainant's damages,  and  for  an  increase  of  those  damages,  and 
for  costs  ;  or  for  as  many  of  those  kinds  of  relief  as  the  com- 
plainant hopes  to  obtain  in  the  action.  The  prayer  for  general 
relief  should  be  in  the  ordinary  form  of  prayers  of  that  kind. 

§  581.  The  form  of  the  interrogating  part  is  prescribed  by 
the  Supreme  Court.4  That  part  is  designed  to  secure  from 
the  defendant  such  admissions  or  statements  as  will  obviate 


1  Parker   v.  Brant,  1  Fisher,   58,  *  Wright  v.   Dame,    22  Pickering 

1850.  (Mass.),  59,  1839. 

*  Elizabeth   v.   Pavement    Co.   97  4  Equity  Rule  21. 

U.  S.  126,  1877.  •  Equity  Rule  43. 


CHAP.   XX.]  ACTIONS    EN    EQUITY.  405 

the  necessity  for  evidence  to  support  those  allegations  of  the 
bill  which  relate  to  his  doings.  The  interrogatories  must  be 
divided  from  each  other,  and  consecutively  numbered,  and  a 
note  most  be  put  at  the  foot  of  the  bill  specifying  which  of 
those  numbered  interrogatories  each  defendant  is  required  to 
answer.1  Where  the  complainant  in  his  bill  waives  the  oath 
which  otherwise  the  defendant  is  entitled  to  make  to  his  an- 
swer, or  if  he  requires  such  an  oath  to  be  made  only  to  the  an- 
swer of  certain  specified  interrogatories  ;  the  answer  of  the  de- 
fendant, though  it  is  in  fact  under  oath,  is  not  evidence  in  his 
favor  on  any  point  not  covered  by  such  specified  interrogato- 
ries ;  unless  the  case  is  heard  on  bill  and  answer  only." 

§  582.  The  prayer  for  process  must  contain  the  names  of 
all  the  defendants  who  are  mentioned  in  the  introductory  part 
of  the  bill,  and  if  any  of  them  are  known  to  be  minors,  or 
otherwise  under  guardianship,  that  fact  must  be  stated  in  the 
prayer  for  process.3 

§  583.  The  bill  must  be  signed  by  counsel,  and  by  a  solicit- 
or of  the  court  in  which  it  is  filed.4  But  if  the  attorney  of 
the  complainant  is  not  only  counsel  in  Federal  courts  general- 
ly, but  also  is  solicitor  in  the  particular  court  in  which  the  bill 
is  filed,  his  signature  will  suffice  in  both  capacities. 

§  584.  An  oath  of  the  truth  of  the  bill  must  be  appended 
to  such  a  document,  if  it  prays  for  an  injunction.5  Such  an 
oath  is  to  be  made  by  the  complainant,  unless  he  is  in  such  a 
situation  as  to  be  unable  to  make  it,  in  which  case  it  may  be 
made  by  his  agent  conversant  with  the  facts."  Where  the 
complainant  is  a  corporation,  the  bill  may  be  verified  by  any 
officer  of  the  corporation  who  knows  it  to  be  true  ;  or  if  no 
such  officer  possesses  that  knowledge,  it  may  be  sworn  to  by 
any  agent  or  attorney  who  does.7  Where  there  is  a  plurality  of 
complainants,  the  bill  may  be  sufficiently  verified  by  the  oath 


1  Equity  Rules  41  and  42.  614,  1825. 

1  Equity  Rule  41.  •  Wood  worth  v.  Edwards,  3  Wood- 

3  Equity  Rule  23.  bury  &  Minot,  124,  1847. 

4  Equity  Rule  24.  '  Bank  of  Orleans  v.  Skinner,   9 
8  Rogers  v.  Abbot,  4  Washington,  Paige,  (N.  Y.)  305,  1841. 


406  ACTIONS   IN    EQUITY.  [CHAP.  XX. 

of  one  of  them. '  If  the  bill  prays  for  a  preliminary  injunction, 
and  if  its  affiant  can  swear  only  on  information  and  belief,  to 
the  defendant's  doings,  and  to  their  character  as  infringe- 
ments, the  application  should  be  fortified  by  affidavits  of  per- 
sons who  know  what  the  defendant  has  done,  and  by  affidavits 
of  experts  who  can  intelligently  testify  to  the  character  of  those 
doings,  as  compared  with  what  appears  to  be  covered  by  the 
complainant's  patent.  Where  the  complainant  can  positively 
swear  to  part  of  the  allegations  of  his  bill,  and  can  swear  to 
the  residue  only  on  information  and  belief,  the;  bill  should  state 
the  first  class  of  facts  positively,  and  the  second  class  on  in- 
formation and  belief  alone  ;  and  the  oath  should  clearly  dis- 
criminate between  the  two  classes  in  that  behalf.  It  is  not 
sufficient  for  the  oath  to  state  that  the  material  averments  of 
the  bill  are  true,"  nor  to  state  that  those  allegations  are  true 
which  render  an  injunction  necessary  and  proper,3  because 
such  a  form  of  oath  leaves  it  uncertain  which  allegations  the 
affiant  had  in  mind.  But  positive  oaths  ought  to  be  based  on 
positive  knowledge.  It  is  much  to  be  feared  that  many  per- 
sons make  affidavits  to  bills  and  other  papers  without  sufficient 
reflection  upon  the  statements  they  contain,  or  upon  the  na- 
ture of  an  oath,  or  upon  the  pains  and  penalties  of  perjury. 
The  fault  is  largely  due  to  the  attorneys  who  write  the 
papers.  The  better  lawyers  will  guard  the  conscience  of  the 
client  at  this  point,  while  the  inferior  ones  are  sometimes 
more  apt  to  mislead  than  to  protect  it.  Affidavits  to  bills, 
and  indeed  all  other  affidavits  to  be  used  in  any  civil  cause,  in 
any  circuit  or  district  court  of  the  United  States,  may  be 
taken  before  a  commissioner  of  the  circuit  court  for  the 
district,4  or  before  any  notary  public  of  either  of  the  States 
•or  Territories  or  of  the  District  of  Columbia.* 

§  585.  A  bill  to  perpetuate  testimony  tending  to  show  a 


1  Goodyear  v.  Allyn,  6  Blatch.  33,  1832. 

1868.  4  Revised  Statutes,  Section  945. 

*  Sauvinet  v.  Poupono,  14  Lonisi-  6  19  Statutes  at  Large,  Ch.  304,  p. 
ana,  87,  1839.  206. 

*  Hebert  v.  Joly,  5  Louisiana,  50. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  407 

particular  patent  to  be  void,  may  be  filed  and  prosecuted  in 
any  United  States  Circuit  Court.1  There  was  once  a  curious 
bill  filed  by  a  hypothetical  inf ringer  against  a  patentee,  stating 
that  the  complainant  did  not  infringe  the  defendant's  patent, 
and  praying  the  court  to  enter  a  decree  to  that  effect.1  The 
counsel  who  argued  in  behalf  of  the  bill  were  men  of  great  ex- 
perience in  the  law,  but  their  views  were  overruled  by  Justice 
HUNT,  who  heard  the  case  on  the  circuit.  He  held  that  no 
such  action,  as  that  attempted,  was  provided  for  by  any  stat- 
ute, or  authorized  by  any  principle  of  equity  jurisprudence. 

§  586.  Amendments  to  bills  may  be  made  as  a  matter  of 
course,  arid  without  costs,  at  any  time  before  a  copy  has  been 
taken  out  of  the  clerk's  office  ;  and  may  be  made  as  of  course 
with  costs,  after  a  copy  has  been  taken  out,  and  before  any 
plea,  answer,  or  demurrer  has  been  filed.3  After  an  answer 
or  plea,  or  demurrer  is  put  in,  and  before  replication,  the 
complainant  may,  upon  motion,  without  notice,  obtain  an  order 
from  any  judge  of  the  court  to  amend  his  bill  on  or  before 
the  next  succeeding  rule  day,  upon  payment  of  costs,  or  with- 
out payment  of  costs,  as  the  judge  may  in  his  discretion 
direct.4  After  a  replication  is  filed,  and  before  the  hearing 
of  the  case,  the  bill  cannot  be  amended  except  upon  a  special 
order  of  the  judge  of  the  court,  upon  motion  or  petition,  after 
due  notice  to  the  other  party,  and  upon  proof  by  affidavit  that 
the  application  is  not  made  for  the  purpose  of  vexation  or 
delay,  and  that  the  matter  of  the  proposed  amendment  is 
material,  and  could  not  with  reasonable  diligence  have  sooner 
been  introduced  into  the  bill,  and  upon  the  plaintiff  submit- 
ting to  such  other  terms  as  may  be  imposed  by  the  judge  for 
speeding  the  cause. &  Amendments  applied  for  at  or  after  the 
hearing  of  a  case  are  not  regulated  by  the  Equity  Rules,  but  are 
allowed  or  refused,  according  to  the  sound  discretion  of  the 


1  Revised   Statutes,  Section  866  ;          s  Celluloid  Mfg.  Co.   v.  Vulcanite 

New  York  ^Baltimore  Coffee  Polish-  Co.  13  Blatch.  375,  1876. 
ing  Co.  v.  New  York  Coffee  Polish-  3  Equity  Rule  28. 

ing  Co.   9  Fed.   Rep.   578,  1881,  11  *  Equity  Rule  29. 

Fed.  Rep.  813,  1882.  *  Equity  Rule  29. 


408  ACTIONS    IN   EQUITY.  [cHAl».  XX. 

court.1  But  that  discretion  is  governed  by  precedents,  and 
those  precedents  indicate  that  amendments,  at  or  after  the 
hearing,  will  be  allowed  only  where  the  bill  is  found  to  be  de- 
fective in  proper  parties,  or  in  its  prayer  for  relief,  or  in  the 
omission  or  misstatement  of  some  fact  or  circumstance  con- 
nected with  the  substance  of  the  case,  but  not  forming  the 
substance  itself,  or  where  it  is  necessary  for  the  complainant  to 
take  issue  with  new  matter  in  the  answer.1  "Where  a  litiga- 
tion has  been  conducted  precisely  as  it  would  have  been  if  the 
proper  amendment  had  been  made  before  any  plea,  answer,  or 
demurrer  was  filed,  the  court  will  allow  that  amendment  to  be 
filed  even  after  the  hearing,  and  thus  make  the  pleadings 
conform  to  what  the  course  of  the  litigation  assumed  them 
to  be.8 

§  587.  A  bill  needs  amendment  when  the  defendant's  de- 
murrer, plea,  or  answer  points  out  a  material  fault  therein,  or 
when  the  complainant  otherwise  discovers  a  material  error  or 
omission  which  may  be  cured,  or  when  the  defendant's  plea  or 
answer  contains  statements  to  which  it  is  necessary  to  plead  by 
way  of  confession  and  avoidance.4  No  reply  by  way  of  con- 
fession and  avoidance  can  be  made  in  a  replication  in  equity.* 
"Where  the  plea  or  answer  sets  up  new  matter,  to  which  the 
complainant  wishes  to  reply  by  way  of  traverse,  the  general 
replication  is  the  proper  pleading  to  file  for  that  purpose.' 

§  588.  Defences  may  be  made  to  a  bill  in  equity  for  in- 
fringement of  a  patent,  by  a  demurrer,  or  by  a  plea,  or  by  an 
answer  ;  or  by  a  demurrer  to  part,  and  a  plea  to  another  part, 
and  an  answer  to  the  residue  ; '  or  by  a  demurrer  to  part,  and 
a  plea  to  the  residue  ;  or  by  a  demurrer  to  a  part,  and  an  an- 
swer to  the  residue  ;  or  by  a  plea  to  a  part,  and  an  answer  to 
the  residue.' 

1  Neale  v.  Neales,  9  Wallace,   9,          4  Wilson  v.  Stolley,  4  McLean,  275, 

1869.  1847. 

*  Shields  v.  Barrow,   17  Howard,  8  Eqnity  Rule  45. 
144,  1854.  •  Eqnity  Rule  66. 

*  The  Tremolo  Patent,  23  Wallace,  '  Eqnity  Rule  32. 

627, 1874  ;  Vattier  v.  Hinde,  7  Peters,          8  Story's  Eqnity  Pleading,  Section 
273,    1833  ;    Dnponti   v.    Mussy,    4       437. 
Washington,  128,  1821. 


CHAP.   XX.]  ACTIONS    IN    EQUITY.  409 

The  nature  and  operation  of  demurrers  and  answers  in 
equity  practice  are  so  well  understood  by  the  profession,  that 
nothing  need  be  said  about  them  in  this  book,  further  than  to 
show  the  applicability  of  each  of  those  forms  of  pleading  to 
the  various  defences  which  belong  to  patent  litigation.  But 
defences  by  plea  may  bear  a  longer  review,  because  they  have 
largely  gone  out  of  use  in  the  Federal  courts  and  their  prin- 
ciples been  partly  forgotten  by  the  members  of  the  bar, 
since  the  Equity  Rules  authorized  nearly  every  defence  to  be 
made  in  an  answer  that  formerly  required  a  plea  for  its  inter- 
position.1 But  those  rules  do  not  authorize  any  defendant 
to  make  a  particular  defence  in  a  plea,  and  if  unsuccessful, 
then  to  make  it  over  again  in  an  answer."  Such  a  plan,  if  al- 
lowed, would  enable  a  defendant  whose  plea  is  overruled  as 
stating  no  defence  at  law,  to  argue  that  question  again  on  the 
final  hearing  ;  and  it  would  enable  a  defendant,  whose  plea  is 
proven  to  be  false  in  fact,  to  contest  that  issue  again  on  new 
testimony  taken  in  pursuance  of  an  answer.  Though  pleas  in 
bar  are  not  necessary  in  equity  cases  in  the  Federal  courts, 
except  under  rare  circumstances,  they  may  sometimes  be 
made  useful  in  saving  time,  labor,  costs,  and  expense.  It  is, 
on  these  accounts,  expedient  to  remind  the  reader  of  the 
general  nature  and  operation  of  those  pleadings,  before  ex- 
plaining their  special  application  to  actions  in  equity  for  in- 
fringements of  patents. 

§  589.  A  plea  in  equity  is  a  sworn  3  pleading,  which  alleges 
that  some  one  fact,  not  stated  in  the  bill,  is  true  ;  or  that  some 
one  statement  of  fact  in  the  bill,  is  not  true  ;  or  that  some  one 
fact,  which  the  bills  states  is  not  a  fact,  is  a  fact  nevertheless. 
A  plea  of  the  first  kind  sets  up  new  matter  by  way  of  confes- 
sion and  avoidance,  and  is  properly  named  an  affirmative  plea.4 
This  is  the  only  sort  of  plea  in  equity  which  was  recognized  in 
the  time  of  Lord  BACON.*  A  plea  of  the  second  kind 


1  Equity  Rule  39.  «  Daniell's  Chancery  Practice,  Vol. 

«  Hubbell  v.  De  Land,  14  Fed.  Eep.  1,  Ch.  XV.  Section  1. 

475,  1882.  &  Beame's  General  Orders  of  the 

1  Equity  Rule  31.  High  Court  of  Chancery,  26. 


410  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

traverses  some  one  statement  of  fact  in  the  bill,  and  is  there- 
fore properly  called  a  negative  plea.  *  This  sort  of  plea  was 
established  by  Lord  THUKLOW,  and  thereafter  became  a  fully 
recognized  part  of  equity  pleading  in  England  and  in  the 
United  States.*  A  plea  of  the  third  kind  states  some  fact  to 
be  true  which  the  bill  seeks  to  impeach.3  It  is  similar  to  an 
affirmative  plea  in  respect  that  it  sets  up  matter  outside  of  that 
upon  which  the  bill  is  based  ;  and  it  is  similar  to  a  negative 
plea,  in  that  it  contradicts  some  one  statement  of  fact  in  the 
bill.  It  may  therefore  he  properly  named  a  composite  plea. 

§  590.  After  a  defendant  files  a  plea  to  a  bill  in  equity,  the 
complainant  should  satisfy  himself  whether  it  states  a  good  de- 
fence 10  the  bill,  or  to  that  part  of  the  bill  to  which  it  refers, 
and  should  ascertain  whether  it  is  true  in  point  of  fact.  If  he 
is  sure  that  he  can  prove  it  to  be  false,  he  should  take  issue 
upon  it  *  by  filing  a  replication.6  If  he  has  any  ground  for 
fear  that  the  plea  is  true  in  fact,  and  any  ground  for  hope  that 
it  is  bad  in  law,  his  true  course  is  to  set  the  plea  down  for 
argument ;  *  which  setting  down  is  equivalent  to  a  demur- 
rer to  the  plea.T  If,  on  the  argument,  the  plea  is  held  to  state 
no  fact  which  constitutes  a  defence  to  the  bill,  or  to  any  part 
thereof,  it  will  be  overruled,  and  the  defendant  will  be  per- 
mitted to  file  an  answer  setting  up  whatever  other  defences  he 
can.8  But  if  the  plea  is  held  on  the  argument  to  state  a  good 
defence  to  the  bill,  or  to  that  part  of  the  bill  to  which  it  ap- 
plies, it  will  be  allowed,  and  thereupon  the  complainant  may 
file  a  replication.9  After  a  replication  is  filed  to  a  plea,  the 
fate  of  the  entire  bill,  or  of  that  part  thereof  to  which  the 
plea  applies,  will  depend  upon  the  trial  of  the  issue  of  fact 
thus  raised  by  the  parties.  If  the  plea  is  proven  to  be  true, 


1  Daniell's  Chancery  Practice,  Vol.  1,  Ch.  XV.,  Section  V. 

1,  Ch.  XV.,  Section  1.  «  Equity  Kule  33. 

1  Story's  Equity  Pleading,  Section  '  Davison's  Ex'rs  v.   Johnson,  16 

668.  New  Jersey  Equity,  113,  1863. 

a  Daniell's  Chancery  Practice,  Vol.  8  Equity  Kule  34. 

1,  Ch.  XV.,  Section  1.  »  Story's  Equity  Pleading,  Section 

4  Equity  Kule  33.  697  ;    Daniell's  Chancery    Practice, 

•  Daniell's  Chancery  Practice,  Vol.  Vol.  1,  Ch.  XV.,  Section  V. 


CHAP.   XX.]  ACTIONS   IN    EQUITY.  411 

the  bill  will  be  dismissed,  if  the  plea  applies  to  the 
whole  bill  ; '  or  if  it  applies  to  a  part  only,  the  bill  will 
be  defeated  as  to  that  part.3  But  if  the  plea  is  proven 
to  be  false,  the  complainant  may  have  a  decree  without  any 
further  proceedings.3  Only  one  defence  can  be  made  to 
a  bill  in  a  plea,  unless  the  court,  in  order  to  avoid  a  special  in- 
convenience, gives  a  special  permission  to  a  defendant  to  make 
a  plurality  of  defences  in  that  method  of  pleading.4  The 
rules  of  English  equity  pleading  allowed  a  defendant  whose 
first  plea  was  overruled  to  set  up  in  a  new  plea  any  other  de- 
fence to  which  a  plea  was  suitable.6  But  in  the  United 
States  courts  no  successive  pleas  are  permitted  to  be  filed,  for 
after  any  plea  has  been  overruled,  the  defendant,  if  he  has 
other  defences  to  interpose,  must  interpose  them  in  an  an- 
swer." This  outline  of  the  principles  of  pleas  in  equity, 
should  be  kept  in  rnind  by  the  reader  while  perusing  sundry 
of  the  sections  which  follow. 

§  591.  The  twenty-seven  defences  which  may  be  made  to 
actions  at  law  for  infringements  of  patents,7  may  all  be  made 
to  actions  in  equity  based  on  such  causes  ;  and  the  latter  ac- 
tions are  also  liable  to  two  other  defences,  to  which  actions  at 
law  are  not  subject.  These  are  non-jurisdiction  of  equity,  and 
laches.  It  is  convenient  first  to  explain  the  facts  which  may 
support  each  of  these  two  defences,  and  to  state  the  various 
methods  in  which  each  may  be  interposed,  and  afterward  to 
review  the  twenty -seven  defences  in  their  order,  and  to  explain 
wherein  any  of  them  differ  in  their  operation  in  equity,  from 
their  operation  at  law,  and  to  state  what  forms  of  pleading  are 

1  Hughes  v.   Blake,    6   Wheaton,  berath  v.  Trimming  Co.  5  Bann.  <fc 

472,  1821  ;  Rhode  Island  v.  Massa-  Ard.  584,  1880. 

chusetts,  14  Peters,  257,  1840  ;  My-  4  Story's  Equity  Pleading,  Section 

era  v.  Dorr,    13  Blatch.   26,    1870  ;  657 ;    Wheeler    v.     McCormick,     8 

Theberath  v.  Trimming  Co.  5  Bann.  Blatch.  267, 1871  ;  Noyes  v.  Willard, 

A  Ard.  585,  1880.  1  Woods,  187,  1871. 

*  Equity  Rule  33.  *  Daniell's  Chancery  Practice,  Vol. 

3  Story's  Equity  Pleading,  Section  1,  Ch.  XV.,  Section  VIII. 

697;     Daniell' s  Chancery    Practice,  •  Equity  Rule  34. 

Vol.  1,  Ch.  XV.,  Section  V  ;  Mitford*  7  Section  440  of  this  book. 
Tyler's  Equity  Pleading,  390  ;  The- 


412  ACTIONS    IN    EQUITY.  [cHAP.    XX. 

suitable  to  each,   under  the  varying  circumstances  of  patent 
litigation. 

§  592.  Non- jurisdiction  in  equity  is  a  defence  which  will 
succeed  in  any  infringement  case,  unless  an  injunction  is 
granted,  or  at  least  rightfully  prayed  for  in  that  case,  or  unless 
some  impediment  prevents  a  resort  to  remedies  purely  legal,  or 
unless  the  circumstances  of  the  case  render  the  remedy  ob- 
tainable by  an  action  at  law,  difficult,  inadequate,  or  incom- 
plete.1 The  precedent  just  cited  is  the  foundation  of  this 
rule,  but  that  case  did  not  decide  all  of  the  points  which  are 
involved  in  the  subject.  It  did  not  decide  whether,  in  in- 
junction cases,  the  jurisdiction  is  dependent  on  an  actual  in- 
junction, or  whether  it  can  be  sustained  on  a  true  and  proper 
bill  for  that  relief,  without  any  actual  writ  being  granted. 
That  question  is  not  yet  formally  settled,  though  its  decision, 
in  favor  of  the  second  hypothesis,  has  been  foreshadowed  by 
the  Supreme  Court."  In  the  case  just  referred  to,  the  bill 
was  filed  while  all  three  of  the  patents  upon  which  it  was 
based  were  still  unexpired.  An  injunction  was  prayed  for, 
but  was  not  granted,  because  the  court  below  held  that  there 
had  been  no  infringement,  and  dismissed  the  bill.  Pending 
an  appeal,  all  three  patents  expired.  When  that  appeal 
was  heard,  the  Supreme  Court  found  infringement  of  all  of 
the  patents,  and  reversed  the  decree,  and  directed  the  court 
below  to  enter  a  new  decree  for  an  account  of  profits  and 
damages,  as  prayed  in  the  bill.  Now,  it  is  clear,  that  unless 
equity  has  jurisdiction  in  injunction  cases  without  actually 
granting  an  injunction,  this  direction  to  the  court  below  was 
erroneous.  It  is  true  the  point  was  not  argued  in  the  case  ; 
but  the  Supreme  Court,  having  lately  heard  the  question  of 
equity  jurisdiction  fully  discussed  in  the  case  of  Root  v.  Kail- 
way  Co.,  could  hardly  have  rendered  so  important  a  mandate 
unwittingly.  The  first  question  which  the  latter  case  left  un- 
settled was  thus  practically  adjudicated  in  the  cotton-tie  case  ; 
and  the  underlying  rule  of  that  decision  has  been  repeatedly 

1  Boot  v.  Railway  Co.,  105  U.  S.  *  *  American  Cotton  Tie  Co.  v.  Sim- 
189,  1881.  mons,  106  U.  S.  89,  1882. 


CHAP.  XX.]  ACTIONS    IN    EQUITY.  413 

followed  and  exemplified  on  the  circuit.1  That  rale  is  as  fol- 
lows :  Where  a  bill  is  filed  before  the  expiration  of  the  patent 
upon  which  it  is  based,  and  where  it  truly  states  a  proper 
case  for  an  injunction,  and  contains  a  proper  prayer  for  that 
relief,  equity  has  jurisdiction,  and  will  retain  it  to  the  end  of 
the  suit,  even  if,  on  account  of  the  delays  or  errors  which  are 
incident  to  litigation,  no  injunction  is  ever  granted  in  the  case. 

The  conditions  and  limitations  of  this  rule  are  to  be  care- 
fully noted  by  the  practitioner.  1.  Where  a  bill  untruly 
states  a  proper  case  for  an  injunction,  and  contains  a  prayer 
for  that  relief,  the  jurisdiction  of  equity  will  lapse  and  the 
bill  be  dismissed,  whenever  it  is  shown  to  have  been  untrue 
in  respect  of  those  of  its  statements  upon  which  the  prayer  for 
an  injunction  is  based."  2.  Where  a  bill  states  no  proper  case 
for  an  injunction,  but  contains  a  prayer  for  such  a  writ,  the 
jurisdiction  of  equity  will  not  attach  at  all,  and  the  bill  will  be 
dismissed  whenever  its  character  is  brought  to  the  attention  of 
the  court.3  3.  Where  a  bill  is  filed  so  shortly  before  the  ex- 
piration of  the  patent  upon  which  it  is  based,  that  no  motion 
for  an  injunction  can  be  regularly  notified  to  the  defendant 
and  heard  by  the  court  till  after  that  expiration,  the  bill  will 
be  dismissed  whenever  the  court  learns  that  no  injunction  can 
lawfully  be  granted.4 

§  593.  The  case  of  Root  v.  Railway  Co.  also  omitted  to 
clearly  state  what  exceptional  facts  will  give  equity  jurisdic- 
tion, independent  of  any  injunction  or  prayer  for  injunction. 
What  the  court  said  on  that  subject  was  said  in  the  follow- 
ing phraseology  :  "  Grounds  of  equitable  relief  may  arise, 
other  than  by  way  of  injunction,  as  where  the  title  of  the  com- 
plainant is  equitable  merely,  or  equitable  interposition  is 
necessary  on  account  of  the  impediments  which  prevent  a  re- 
sort to  remedies  purely  legal ;  and  such  an  equity  may  arise 

1  Gottfried  v.  Brewing  Co.  13  Fed.  1881. 

Rep.  479.  1882  ;  Gottfried  v.  Moer-  3  Campbell  v.  Ward,  12  Fed.  Rep. 

lein,  14  Fed.  Rep.  170,  1882  ;  Fore-  150,  1882. 

hand  v.  Porter,  15  Fed.  Rep.  256,  *  Burdell    v.    Comstock,    15    Fed. 

1883.  Rep.  395,  1883. 

*  Dowell  v.  Mitchell,  105  U.  S.  430, 


414  ACTIONS    IN    EQUITY.  [CHAP.   XX. 

out  of,  and  inhere  in,  the  nature  of  the  account  itself,  spring- 
ing from  special  and  peculiar  circumstances  which  disable  the 
patentee  from  a  recovery  at  law  altogether,  or  render  his 
remedy  in  a  legal  tribunal  difficult,  inadequate,  and  incom- 
plete ;  and  as  such  cases  cannot  be  defined  more  exactly,  each 
must  rest  upon  its  own  peculiar  circumstances,  as  furnishing  a 
clear  and  satisfactory  ground  of  exception  from  the  general 
rule."  Before  this  deliverance  was  old  enough  to  be  printed 
in  the  official  reports,  its  meaning  was  the  theme  of  warm  con- 
tention on  the  circuit  ; '  and  before  the  case  was  a  year  old, 
the  same  justice  who  delivered  the  opinion  of  the  Supreme 
Court  was  called  upon  to  deliver  another  in  explanation  there- 
of.* In  the  latter  case  it  was  held  that  grounds  of  equitable" 
relief  do  not  arise  "  where  the  title  of  the  complainant  is 
equitable  merely,"  unless  that  fact  constitutes  an  impedi- 
ment to  a  resort  to  remedies  purely  legal,  or  constitutes  a  cir- 
cumstance which  renders  the  remedy  obtainable  by  an  action 
at  law  difficult,  inadequate,  or  incomplete. 

§  594.  "Want  of  jurisdiction. in  equity  may  be  set  up  by  a 
defendant  in  a  demurrer  or  in  an  answer,  but  it  does  not  really 
require  any  pleading  to  sustain  it.  It  may  be  interposed  by  a 
motion  at  any  stage  of  the  case  in  the  circuit  court.3  Even 
on  the  hearing  of  an  appeal  in  the  Supreme  Court,  the  de- 
fendant may  successfully  call  attention  to  it  ;  and  indeed  that 
court  may  enforce  that  defence  against  the  express  waiver  and 
request  of  the  defendant.4  But  there  is  an  advantage  in 
making  this  defence  by  demurrer  instead  of  by  answer,  or  by  a 
motion  after  an  answer ;  for  in  the  first  case  the  bill  may  be 
dismissed  with  costs,  while  in  either  of  the  others  no  costs  can 
be  recovered,  even  if  the  defence  is  successful.* 

§  595.  Pridr  adjudication  in  an  action  at  law  is  not  neces- 
sary to  give  jurisdiction  to  equity  in  cases  of  infringements  of 
patents,  nor  is  such  an  adjudication  necessary  to  call  equity 

1  Hayward   v.   Andrews,    12   Fed.       13  Fed.  Rep.  446,  1882. 
Eep.  786,  1882.  «  Hipp  v.  Babin,  19  Howard,  271, 

*  Hayward  v.  Andrews,  106  U.  S.       1856. 

672,  1882.  *  Dawes   v.  Taylor,  14   Reporter, 

*  Spring  v.   Sewing-Machine    Co.       180,  1882. 


CHAP.   XX.]  ACTIONS    IN    EQUITY.  415 

into  activity  in  that  behalf.  A  circuit  court  may,  in  its  dis- 
cretion, order  a  trial  at  law  in  such  a  case,  or  order  a  trial  by 
jury  at  its  own  bar,1  in  order  to  inform  the  conscience  of  the 
chancellor,  but  no  such  trial  can  be  demanded  by  either  or 
both  of  the  parties  as  an  absolute  right,  for  courts  of  equity 
are  not  only  really,  but  also  technically,  competent  to  judge  of 
questions  of  fact." 

§  596.  Laches  is  a  defence  which  is  peculiar  to  courts  of 
equity.  It  arises  from  one  of  the  fundamental  maxims  which 
govern  the  administration  of  justice  in  those  courts.  That 
maxim  is  generally  stated  in  the  Latin  language,  and  in  the 
following  words  :  Vigilantibus  non  dormientibus  cequitas 
subvenit.  In  pursuance  of  the  modern  tendency  to  substitute 
English  equivalents  for  Latin  phrases  in  text-writing,  it  is  well 
to  set  down  in  this  place,  a  free  but  sufficiently  accurate  trans- 
lation of  this  maxim.  Equity  aids  the  vigilant,  and  not  the 
sleeping.  In  pursuance  of  this  maxim,  a  court  of  equity 
sometimes  refuses  its  remedies  because  they  were  not  invoked 
with  diligence,  whether  the  right  sued  upon  is  old  enough  to 
be  barred  by  a  statute  of  limitation  or  not.3  But  delay  to  sue 
is  not  always  laches,  because  it  may  have  resulted  from  the 
fact  that  the  complainant  did  not  know  of  the  infringement 
till  long  after  it  began  ;  or  from  the  fact  that  he  was  litigating 
a  test  case  under  his  patent  against  another  infringer  during 
the  time  of  the  delay.4  The  first  of  these  circumstances  ex- 
cuses delay,  because  vigilance  does  not  imply  omniscience,  and 
the  second  excuses  delay  because  abstinence  from  vexatious 
litigation  is  worthy  to  be  praised  rather  than  punished  by  a 
court  of  equity.  Where  neither  of  these  excuses  can  be  in- 
voked by  a  complainant,  he  may  perhaps  avail  himself  of 
some  excuse  arising  out  of  grievous  poverty  or  protracted  sick- 
ness. How  short  a  delay  will  constitute  laches  in  the  absence 
of  all  special  excuses,  is  a  question  to  which  no  definite  an- 

1  18  Statutes  at  Large,  Part  3,  Ch.  ton,  168,  1825  ;  Sullivan  v.  Kailroad 

77,  Section  2,  p.  316.  Co.  94  U.  S.  811,  1876. 

1  Cochrane  v.  Deener,  94  U.  S.  780,  4  Van  Hook  v.  Pendleton,  1  Blatch. 

1876.  193,  1846  ;  Green  v.  French,  4  Bann. 

'Elmendorf  v.  Taylor,  10  Wbea-  £Ard.  171,  1879. 


416  ACTIONS    IN    EQUITY.  [CHAP.  XX. 

swer  seems  ever  to  have  been  given.  But  it  is  settled  that 
where  delay  is  without  a  particular  excuse,  less  of  it  is  re- 
quired to  deprive  a  complainant  of  an  account  of  profits,  than 
is  required  to  deprive  him  of  a  permanent  injunction.1  A 
right  to  a  preliminary  injunction  would,  however,  probably  be 
lost  by  a  shorter  delay,  than  would  be  required  to  deprive  a 
complainant  of  the  right  to  either  of  the  other  kinds  of  relief. 

§  597.  The  defence  of  laches  can  be  made  in  a  demurrer,* 
or  in  an  answer,  or  in  an  argument  on  the  hearing  without  any 
pleading  to  support  it.3  But  a  plea  is  not  appropriate  for 
such  a  defence,  because,  if  the  bill  shows  delay  and  is  silent 
about  excuses  therefor,  the  method  of  a  plea  would  be  to  state 
that  there  is  no  such  excuse,  and  because,  by  taking  issue  on 
such  a  plea,  and  proving  an  excuse,  the  complainant  could  cut 
off  all  other  defences,  and  win  the  cause.  To  guard  against  a 
demurrer  based  on  laches,  in  a  case  where  long  delay  inter- 
vened between  the  infringement  and  the  filing  of  the  bill,  the 
bill  ought  to  state  the  existing  excuses  for  that  delay  ;  and  to 
guard  against  such  a  defence  being  started  on  the  hearing,  the 
evidence  ought  to  show  whatever  excuse  the  complainant  can 
interpose. 

§  598.  The  first  of  the  twenty-seven  defences  which  are 
known  both  to  actions  at  law  and  actions  in  equity  for  in- 
fringements of  patents,  when  relied  upon  in  an  action  in 
equity,  should  be  pleaded  in  an  answer.  It  can  seldom  be 
made  in  a  demurrer,  because  even  if  the  letters  patent  appear 
on  their  face  to  have  been  granted  for  something  other  than  a 
process,  machine,  manufacture,  composition  of  matter,  or  de- 
sign, the  bill  will  seldom  disclose  that  fault.  Nor  is  a  plea 
applicable  to  this  defence,  because  its  validity  depends  upon 
the  construction  of  the  letters  patent,  and  not  upon  any 
matter  of  fact  to  which  an  oath  would  be  applicable. 

§  599.  The  second  defence  may  be  made  on  the  hearing 
without  any  pleading,  in  all  cases  where  the  court  will  take 


1  McLean   v.   Fleming,    96  U.   S.      222,  1850. 

257,  1877.  3  Sullivan  v.  Railroad  Co.  94  U.  8. 

»  Maxwell  v.  Kennedy,  8  Howard,      811,  1876. 


CHAP.   XX.]  ACTIONS    IN    EQUITY.  417 

judicial  notice  of  the  facts  which  show  want  of  invention.1 
But  where  the  state  of  the  art  needs  to  be  proved  by  evi- 
dence, in  order  to  show  that  the  advance  covered  by  the  patent 
did  not  amount  to  invention,  it  is  necessary  to  set  up  the  de- 
fence of  want  of  invention  in  an  answer.  A  demurrer  will 
seldom  be  appropriate  to  this  defence,  because  bills  will  sel- 
dom disclose  want  of  invention,  even  if  the  letters  patent  do. 
A  plea  will  seldom  be  applicable  to  such  a  case,  because  de- 
fendants can  seldom  swear  to  the  state  of  the  art,  and  even 
where  they  can,  they  cannot  plead  resulting  want  of  inven- 
tion, because  that  depends  upon  the  construction  of  the  pat- 
ent, which  is  to  be  made  by  the  court  in  the  light  of  the  state 
of  the  art.  When  interposing  this  defence  in  an  answer,  it  is 
not  necessary  to  state  what  facts  are  intended  to  be  proven  in 
its  support ;  because  those  facts  refer  only  to  the  state  of  the 
art,  and  not  to  novelty.2  The  function  of  an  answer,  in  re- 
spect of  this  defence,  is  to  notify  the  complainant  that  the  evi- ' 
dence  of  the  state  of  the  art,  which  is  taken  by  the  defendant, 
will  be  invoked  at  the  hearing  to  show  want  of  invention,  and 
not  merely  to  narrow  the  patent  and  thus  show  non-infringe- 
ment. 

§  600.  The  third  defence  cannot  be  set  up  in  a  plea,  because 
the  statute  expressly  provides  that  it  shall  be  set  up  in  an  an- 
swer.3 Nor  can  it  be  based  on  such  a  notice  as  will  effect  the 
purpose  in  an  action  at  law.4  It  requires  an  answer  for  its 
embodiment  ; 6  and  that  answer  must  state  the  same  things 
which  a  statutory  notice  of  want  of  novelty  in  an  action  at  law 
is  required  to  contain.8 

It  has  been  held  on  the  circuit,  that  evidence  of  want  of 
novelty,  taken  without  being  properly  pleaded  in  the  answer, 


1  Brown  v.  Piper,  91  U.  S.  41,  1875  ;  1865. 

Slawson  v.  Railroad  Co.   107  U.  8.  8  Seymour  u.  Osborne,  11  Wallace, 

649,    1882.  516,    1870  ;    Roemer    v.   Simon,   95 

1  Vance  v.  Campbell,  1  Black.  430,  U.  S.  214,  1877. 

1861.  6  Agawam  Co.  v.  Jordan,  7  Wallace, 

8  Carnrick  v.   McKesson,   8   Fed.  583,  1868  ;  Bates  v.  Coe,  98  U.  S.  31, 

Rep.  807,  1881.  1878  ;  Planing- Machine  Co.  v.  Keith, 

4  Doughty  v.  West,  2  Fisher,  555,  101  U,  S.  493,  1879. 


4:18  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

is  not  made  admissible  by  being  set  up  in  a  subsequent  amend- 
ment of  that  pleading.1  In  another  case  it  was  held  to  rest 
in  the  discretion  of  the  court  to  admit  the  evidence,  so  taken 
and  subsequently  pleaded,  or  to  reject  that  evidence,  but  permit 
the  defendant  to  take  it  anew  under  the  amended  answer.* 
These  holdings  are  hardly  consistent  with  each  other,  and 
neither  of  them  seems  consistent  with  an  earlier  Supreme 
Court  decision  on  a  similar  point.3  In  that  case  it  was  held 
that  evidence  of  want  of  novelty  is  admissible  in  an  action  at 
law,  where  it  was  taken  without  being  properly  set  up  in  any 
notice,  but  where  a  proper  notice  was  subsequently  given,  and 
given  thirty  days  before  the  trial. 

"Where  the  answer  states  that  the  patent  sued  on  is  void  for 
want  of  novelty,  evidence  to  support  that  statement  will  be 
admitted  on  the  hearing,  though  not  specified  in  the  answer, 
unless  the  complainant  objects  to  that  evidence  for  want  of 
the  statutory  notice,4  and  also  makes  a  motion  to  strike  it 
from  the  record.6 

§  601.  The  fourth  defence  cannot  rightly  be  made  in  a  plea, 
for  though  a  defendant  may  make  an  oath  that  he  believes  the 
patented  thing  to  be  without  utility,  he  can  hardly  swear  that 
it  is  certainly  so.  Others  might  succeed  in  using  it  where  he 
had  failed.  An  answer  is  therefore  the  only  proper  pleading 
for  this  defence,  and  without  being  set  up  in  the  answer, 
it  cannot  be  made  at  the  hearing." 

§  602.  The  fifth  and  sixth  defences  both  require  to  be  inter- 
posed in  an  answer,  because  they  both  rest  on  evidence  of 
abandonment  outside  of  the  bill,  and  because,  being  two  of 
the  five  defences  provided  for  by  Section  4920  of  the  Revised 
Statutes,  neither  of  them  can  be  set  up  in  a  plea.T 


1  Roberts  v.  Buck,  1  Holmes,  224,  1869  ;  Barker  v.  Stowe,  15   Blatch. 
1873.  49,  1878. 

2  Allis  v.  Buckstaff,  13  Fed.  Rep.  *  Elm  City  Co.  y. Wooster,  6  Fisher, 
879,  1882.  453,  1873. 

8  Teese  v.  Huntingdon,  23  How-  6  Rubber  Co.  v.  Goodyear,  9  Wal- 

ard,  2,  1859.  lace,  793,  1869. 

4  Roemer  v.  Simon,  95  U.  S.  220,  '  Carnrick  v.  McKesson,  8  Fed. 

1877  ;  Brown  v.  Hall,  6  Blatch.  405,  Rep.  807,  1881. 


CHAP.  XX.]  ACTIONS    IN   EQUITY.  4:19 

§  603.  The  seventh  defence  cannot  be  interposed  in  a  plea 
because  it  involves  the  construction  of  the  claims  of  the  letters 
patent  in  suit.  Letters  patent  are  not  void,  merely  because 
they  describe  something  not  shown  in  the  original  application 
therefor.  It  is  only  when  they  claim  something  not  indicated 
or  described  in  the  specification  or  drawings  of  the  original  ap- 
plication that  they  are  obnoxious  to  the  seventh  defence.  The 
question  what  letters  patent  claim  is  a  question  of  law  for  the 
court,  and  is  therefore"  not  one  which  can  be  raised  by  a  plea 
in  an  action  in  equity.  Nor  can  this  defence  be  raised  by  a 
demurrer,  because,  in  order  to  decide  upon  its  validity  the 
court  must  not  only  construe  the  claims  of  the  patent,  but 
must  also  compare  the  claims  so  construed  with  the  original 
application,  and  that  application  must  be  introduced  for  the 
purpose  as  a  matter  of  evidence.  This  defence  must  there- 
fore be  set  up  in  an  answer,  and  not  otherwise. 

§  604.  The  eighth  defence  cannot  be  set  up  in  a  plea,  but 
must  be  interposed  in  an  answer,  because  it  is  one  of  the  five 
for  which  the  statute  prescribes  that  form  of  pleading  in  equity 
cases. l 

§  605.  Either  the  ninth  or  the  tenth  defence  may  be  inter- 
posed in  a  plea  where  the  defendant  knows  the  fact  of  joint 
or  of  sole  invention  upon  which  they  respectively  stand. 
Each  of  these  defences  rests  upon  a  single  matter  of  fact,  which 
if  decided  against  the  complainant  is  fatal  to  his  patent.  But 
it  is  always  unwise  to  make  either  of  these  defences  in  a  plea, 
because  the  complainant  will  have  no  alternative  but  to  file  a 
replication,  and  because,  by  doing  so,  he  will  cut  off  all  other 
defences,  and  because  there  is  always  a  possibility  that  the 
court  will,  on  the  evidence,  decide  that  the  invention  was  joint, 
or  was  several,  according  as  it  may  be  necessary  to  do  in  order 
to  sustain  the  patent.2  An  answer  is  therefore  the  best  plead- 
ing in  which  to  embody  either  of  these  two  defences. 

§  606.  The  eleventh  defence  stands  in  the  same  category, 


1  Revised  Statutes,  Section  4920  ;  »  Pitts  v.  Hall,  2  Blatch.  229, 1851 ; 
Carnrick  v.  McKesson,  8  Fed.  Rep.  Blandy  v.  Griffith,  3  Fisher,  616, 
807,  1881.  1869. 


420  ACTIONS    IN    EQUITY.  [CHAP.  XX. 

in  respect  of  equity  pleading,  with  the  third,  fifth,  sixth,  and 
eighth,  and  must,  like  them,  be  made  in  an  answer,  and  not  in 
a  plea. 

§  607.  The  twelfth  defence  cannot  be  made  in  a  plea,  be- 
cause, though  the  defendant  might  be  able  to  make  oath  that  he 
is  a  person  skilled  in  the  art  to  which  the  invention  covered  by 
the  patent  appertains,  and  that  the  description  contained  in  that 
patent  is  not  full,  clear,  concise,  and  exact  enough  to  enable 
him  to  make  and  use  the  same,  he  could  not  make  oath  that 
the  same  thing  is  true  of  other  persons  skilled  in  that  art.  Even 
if  a  defendant  were  to  make  the  latter  oath,  the  complainant, 
by  replying,  could  confine  the  issues  of  the  case  to  that  point, 
and  could  probably  win  that  issue  by  means  of  the  evidence  of 
other  skilled  persons.  An  answer  is,  therefore,  the  proper 
pleading  for  this  defence  also. 

§  608.  Nor  can  the  thirteenth  defence  be  set  up  in  a  plea, 
because  it  depends  on  the  construction  of  the  claims  of  the 
letters  patent,  and  not  upon  any  matter  of  fact  to  be  sworn  to 
in  a  plea  or  proved  in  a  deposition.  And  this  defence  can- 
not be  made  by  a  demurrer,  unless  the  letters  patent  happen  to 
have  been  made  a  part  of  the  bill,  in  which  case  it  probably  can 
be  interposed  by  that  form  of  pleading.1  Where  the  bill  is 
in  an  ordinary  form,  without  having  the  letters  patent  attached 
to  it  as  an  exhibit,  or  otherwise  incorporated  into  its  state- 
ments, an  answer  is  the  only  pleading  in  which  to  interpose 
this  defence. 

§  609.  The  fourteenth  defence  also  generally  requires  to  be 
set  up  in  an  answer."  A  plea  is  not  ordinarily  suitable  for 
the  purpose,  because  this  defence  depends  primarily  upon  the 
necessity  for  a  disclaimer,  and  because  that  necessity  depends 
upon  the  claim  being  obnoxious  to  one  or  more  of  the  first 
three  defences,  and  because  the  third  defence  always,  and  the 
first  and  second  generally,  require  to  be  interposed  in  an  an- 
swer, if  interposed  at  all.  Even  if  technically  proper  in  any 
case,  a  plea  would  be  at  least  an  injudicious  pleading  to  adopt 

1  Powder  Co.  v.  Powder  Works,  98  *  Burden  v.  Corning,  2  Fisher, 
U.  8.  126,  1878.  498,  1864. 


CHAP.  XX.]  ACTIONS   IN    EQUITY.  421 

for  this  defence,  because  it  would  be  likely  to  be  met  with 
proof  of  some  good  excuse  for  the  delay  to  disclaim. 

§  610.  The  fifteenth  defence  can  never  be  interposed  in  a 
plea,  because  it  primarily  depends  either  upon  the  original 
patent  not  being  inoperative  or  invalid  by  reason  of  a  defec- 
tive or  insufficient  specification,  or  upon  its  not  being  invalid 
in  part,  for  want  of  novelty.1  Where  it  primarily  depends 
upon  the  first  of  these  matters,  it  depends  either  upon  the 
construction  of  the  original  letters  patent,  or  upon  proof  that 
any  person  skilled  in  the  art  to  which  the  invention  belongs, 
could  from  the  original  specification  make  and  use  the  same  ; 
and  where  it  depends  upon  the  second  of  these  matters,  it  de- 
pends upon  proof  that  everything  claimed  in  the  original 
letters  patent  was  novel.  None  of  the  matters  can  ordinarily 
be  put  into  a  plea.  Statements  of  the  true  construction  of  a 
patent  cannot  be,  because  they  are  statements  of  law.  State- 
ments that  any  person  skilled  in  the  art  can  make  and  use  a 
particular  invention,  from  a  particular  specification,  are  hardly 
proper  in  pleas,  because  a  defendant  ought  seldom  to  attempt 
to  swear  what  other  persons  can  or  cannot  do.  And  state- 
ments that  everything  claimed  in  the  patent  of  another  was 
novel  with  him,  should  never  go  into  a  plea,  because  a  de- 
fendant can  never  know  that  none  of  those  things  were  pre- 
viously known  or  used. 

Nor  can  this  defence  be  raised  by  a  demurrer,  unless  the 
original  letters  patent  are  incorporated  in  the  bill  for  infringe- 
ment of  its  reissue  ;  and  not  even  then  can  it  be  so  raised  un- 
less the  question  is  solely  one  of  construction  of  the  original 
letters  patent.  An  answer  is  always  the  most  suitable  place 
in  which  to  interpose  this  defence,  and  generally  it  is  the  only 
possible  pleading  for  the  purpose. 

§611.  The  sixteenth  defence  depends  partly  on  the  com- 
parative construction  of  the  original  and  reissue  letters  patent, 
and  partly  upon  evidence  that  the  delay  in  applying  for  the 
reissue  was  unreasonable.  Where  both  the  original  and  the 
reissue  are  incorporated  in  the  bill,  this  defence  may  be  made 

1  Revised  Statutes,  Section  4916. 


422  ACTIONS    IN   EQUITY.  [CHAP.  XX. 

by  demurrer,  because  the  court  then  has  every  necessary 
means  of  making  the  comparative  construction,1  and  because 
long  delay  will  be  held  to  be  unreasonable,  unless  it  is  excused 
in  the  bill.  Where  the  bill  omits  to  set  out  both  the  reissue 
and  the  original,  this  defence  must  be  made  in  an  answer,  for 
such  mixed  questions  of  law  and  fact  are  wholly  unsuitable  to 
a  plea.2 

During  the  time  which  has  passed  since  this  defence 
was  made  known  to  the  bar,3  it  has  several  times  been  success- 
fully raised  on  the  hearing,  without  any  pleading  to  support  it. 
But  lack  of  pleading  appears  to  have  been  suggested  in  but 
one  of  the  reported  cases,  and  in  that  case  the  court  decided 
that  there  was  no  such  lack.  To  hold  that  there  is  no  neces- 
sity for  any  answer  to  support  this  defence,  would  seem  to  be 
contrary  to  the  fundamental  rules  of  equity  pleading.4 

§  612.  The  seventeenth  defence  depends  upon  the  compara- 
tive construction  of  the  original  and  reissue  letters  patent.  It 
may  be  made  on  demurrer,  where  both  those  documents  are 
incorporated  into  the  bill.5  If  both  letters  patent  are  not  so 
incorporated,  the  defence  may  be  made  in  an  answer.  It  has 
once  been  held  on  the  circuit  that  this  defence  may  be  made 
in  a  plea  ;  *  but  that  decision  may  not  be  followed  here- 
after, because  the  question  involved  in  this  defence  is  one  of 
construction  of  documents,7  and  not  a  question  of  fact  to  be 
sworn  to  by  a  defendant,  or  to  be  decided  upon  the  replication 
of  the  complainant  and  the  evidence  of  experts. 

§  613.  The  eighteenth  defence  may  be  made  by  a  demurrer, 
where  the  bill  shows  who  applied  for  the  extension,  and  shows 
that  he  was  neither  the  inventor,  nor  his  administrator  nor  ex- 
ecutor. Where  the  bill  does  not  contain  full  statements  on 
both  these  points,  this  defence  should  be  made  in  an  answer  ; 

1  Powder  Co.  v.  Powder  Works,  98  lace,  793,  1869. 

U.  S.  126,  1878.  *  Powder  Co.  v.  Powder  Works,  98 

»  Maxwell  v.  Kennedy,  8  Howard,  U.  S.  134,  1878. 

222,  1850.  «  Hubbell  v.  De  Land,  14  Fed.  Rep. 

s  Miller    v.   Brass    Co.  104  U.  8.  471,  1882.       . 

350,  1882.  '  Powder  Co.  v.  Powder  Works,  98 

4  Kubber  Co.  v.  Goodyear,  9  Wai-  U.  S.  134,  1878. 


CHAP.  XX.]  ACTIONS    IN    EQUITY.  423 

for  the  defendant  cannot  know  of  his  own  knowledge  that  the 
proper  person  did  not  apply  for  the  extension,  and  because 
that  fact  could  not  be  proven  by  producing  a  copy  from  the 
records  of  the  Patent  Office,  of  an  application  made  by  an  im- 
proper person,  even  if  Patent  Office  records  could  be  pleaded 
in  equity  without  an  oath  to  verify  the  plea. 

§  614.  The  nineteenth  defence  may  be  set  up  in  a  plea,  if 
the  defendant  has  personal  knowledge  of  the  record  which  he 
pleads,  and  can  therefore  make  the  required  oath  that  there  is 
in  fact  such  a  record.  If  he  has  no  such  knowledge,  the  de- 
fence must  be  made  in  an  answer,  for  the  ancient  rule  that 
records  may  be  pleaded  in  equity,  without  an  oath, is  inconsis- 
tent with  the  United  States  equity  rule  upon  the  subject  of 
pleas. * 

§  615.  The  twentieth  defence  can  be  made  by  a  demur- 
rer, where  the  bill  shows  the  patent  to  have  expired  when 
the  doings  which  constitute  the  alleged  infringement  were 
committed.  But  that  will  seldom  or  never  be  the  fact,  for 
the  expiration  relied  upon  in  such  cases  is  nearly  always  due 
to  the  expiration  of  some  foreign  patent  for  the  same  inven- 
tion, and  not  to  anything  which  appears  on  the  face  of  the 
United  States  patent  in  suit.  "Where  the  defence  depends 
upon  the  expiration  of  a  foreign  patent  which  is  not  men- 
tioned in  the  bill,  it  cannot  be  set  up  in  a  demurrer.  Nor  can 
it  be  set  up  in  a  plea,  because  it  depends  not  only  upon  the 
existence  of  a  foreign  patent,  but  also  upon  that  patent  being 
for  the  same  invention  as  the  patent  in  suit,  and  because  this 
last  question  is  one  of  construction  for  the  court.*  This  de- 
fence must  therefore  be  interposed  in  an  answer. 

§  616.  The  twenty- first  defence  may  be  made  in  a  plea,  if 
the  defendant  knows  that  the  complainant  made  or  sold  speci- 
mens of  the  patented  thing  during  the  life  of  the  patent  with- 
out marking  them  "  patented,"  and  if  the  defendant  was  not 
duly  notified  of  his  infringement,  or,  if  notified,  immediately 
discontinued  to  infringe.'  This  defence  can  also  be  made  in 

1  Equity  Rule  31.  436,  1880. 

*  De  Florez  v.  Reynolds,  17  Blatch.          3  Revised  Statutes,  Section  4900. 


424:  ACTIONS    IN    EQUITY.  [CHAP.  XX. 

an  answer,  and  that  is  the  most  convenient  pleading  in  which 
to  interpose  it,  because  it  is  seldom  a  full  defence  to  an  action 
in  equity.  It  is  never  a  defence  to  a  prayer  for  an  injunc- 
tion, though  it  is  to  a  prayer  for  damages.1  Whether  it  is  a 
defence  to  a  prayer  for  infringer's  profits,  is  an  unsettled  ques- 
tion, the  solution  of  which  will  involve  the  balancing  of  a 
number  of  considerations.  In  the  affirmative,  it  can  be  argued 
that  profits  are  but  equitable  substitutes  for  damages,  and  as 
equity  follows  the  law  in  respect  of  other  parts  of  the  patent 
system,  it  ought  also  to  follow  it  in  this.  But  it  can  be  replied 
in  the  negative,  that  equity  does  not  altogether  follow  the  law 
in  the  matter  of  pecuniary  recoveries  for  infringements  of 
patents,  but  primarily  determines  the  amounts  of  such  recov- 
eries on  quite  different  principles  from  those  used  in  courts  of 
law  for  that  purpose.  And  it  can  also  be  argued  in  the  nega- 
tive, that  though  it  would  be  wrong  to  force  a  defendant  to 
pay  damages,  regardless  of  the  amount  of  his  profits,  for  in- 
fringements against  which  the  complainant  neglected  to  warn 
him,  it  would  not  be  unjust  to  compel  a  defendant  to  return 
to  the  complainant  whatever  profits  the  former  realized  from 
even  an  unwitting  infringement  of  the  patent  of  the  latter. 
To  this  last  point  it  can  be  rejoined  for  the  affirmative,  that 
such  a  case  is  not  merely  a  case  of  unwitting  infringement,  but 
is  also  an  instance  of  a  patentee  leading  others  to  infringe  his 
patent,  by  unlawfully  concealing  the  fact  of  its  existence,  and 
that,  though  a  failure  to  mark  "  patented  "  would  lack  some  of 
the  elements  of  a  technical  estoppel,  still  it  is  such  a  violation  of 
the  statute  as  ought  to  cause  a  forfeiture  of  all  remedies  for 
infringement  committed  before  the  giving  of  actual  notice  of 
the  patent.  This  consideration  seems  to  exhaust  the  argu- 
ment, and  to  show  that  the  twenty-first  defence  is  a  full  one 
against  all  prayers,  except  a  prayer  for  an  injunction. 

§  617.  The  twenty-second  defence  may  be  made  by  demur- 
rer, where  the  bill  sets  forth  copies  of  the  complainant's  title 
papers,  either  in  the  s'tating  part,  or  in  exhibits  attached  to 
the  bill  and  thus  made  parts  thereof,  or  where  the  bill  pleads 

1  Goodyear  v.  Allyn,  6  Blatch.  33,  1868. 


CHAP.   XX.]  ACTIONS    IN    EQUITY.  425 

those  papers  according  to  their  legal  effect,  and  in  such  a  way 
that  the  title  appears  on  the  face  of  the  bill  to  be  defective. 
"Where  the  bill  shows  a  good  prima  facie  title,  but  where  the 
defendant  knows  that  one  of  the  papers  which  compose  its 
chain  was  executed  after  the  assignor  had  assigned  his  right  to 
another,  and  that  the  prior  assignment  was  recorded  in  the 
Patent  Office  within  three  months  after  its  date  ;  or  knows 
that  such  assignor  assigned  his  right  to  another  for  a  valuable 
consideration,  more  than  three  months  after  the  making  of 
the  assignment  set  up  in  the  bill,  and  before  the  latter  was 
recorded  in  the  Patent  Office,  and  without  the  junior  assignee 
having  notice  of  the  senior  unrecorded  assignment  ;  the  de- 
fendant may  successfully  set  up  those  facts  in  a  plea.  The 
action  of  a  complainant  will  be  defeated  by  evidence  of  either 
of  these  two  sorts  of  faults  in  his  title.1  Either  of  these  sets 
of  facts  may  also  be  set  up  in  an  answer,  but  it  is  better  to  in- 
terpose them  in  a  plea  when  the  defendant  is  certain  of  their 
existence. 

§  618.  The  twenty-third  defence  may  be  put  into  a  plea, 
and  that  is  the  most  appropriate  pleading  in  which  to  inter- 
pose it,  where  the  defendant  is  sure  of  the  fact  of  a  license. 
But  if  there  is  any  doubt  about  the  existence  of  a  vital 
license,  and  if  the  defendant  has  any  other  defence,  it  is  un- 
wise to  trust  the  case  to  a  plea,  for  if  he  fails  in  proving  its 
truth,  he  will  thereupon  suffer  final  defeat,  no  matter  how 
many  other  defences  he  might  have  invoked. 

§  619.  The  twenty-fourth  defence  should  be  treated  in 
respect  of  pleading  in  the  same  way  as  the  twenty-third,  and 
that  whether  the  release  pleaded,  was  executed  before  or  after 
the  filing  of  the  bill.' 

§  620.  The  twenty-fifth  defence  may  be  interposed  in  a  plea, 
but  there  is  no  good  reason  for  adopting  that  practice,  and 
there  is  an  excellent  one  for  avoiding  it.  When  such  a  plea  is 
put  in,  the  complainant  has  no  alternative  but  to  file  a  replica- 
tion, because  non-infringement  is  undeniably  a  perfect  defence 
to  a  bill  based  on  alleged  infringement  of  a  patent.  Such  a 

1  Hevised  Statutes,  Section  4898.         8  Darnell's  Chancery  Practice,  669. 


4:26  ACTIONS    IN    EQUITY.  [CHAP.   XX. 

replication  will  confine  the  issues  of  the  case  to  the  single  one 
of  infringement,'  and  thus  cut  off  all  other  defences,  if  that 
issue  is  decided  against  the  defendant."  It  was  an  inadver- 
tent disregard  of  these  points  of  equity  pleading,  that  led  the 
court,  in  one  case  on  the  circuit,  to  hold  that  a  plea  of  non- 
infringement  is  not  admissible  in  an  equity  suit.3  "Where  the 
defendant  is  sure  that  he  has  never  infringed  the  patent  upon 
which  he  is  sued,  a  plea  of  non-infringement  is  a  proper  de- 
fence to  make.  But  if  he  has  any  doubt  6n  that  point,  and 
has  any  hope  based  on  any  other  defence,  he  should  not  risk 
the  entire  litigation  on  one  issue  :  should  not  plead  non-in- 
fringement, but  should  set  up  that  and  all  his  other  defences 
in  an  answer. 

§  621.  The  twenty-sixth  defence  may  be  made  in  a  plea,  and 
it  ought  to  be  so  made  in  every  case  where  the  defendant  is 
certain  that  he  can  prove  the  facts  which  he  is  advised  amount 
to  a  basis  for  an  estoppel.  If  those  facts  are  found,  on  an 
argument  of  the  plea,  not  to  constitute  an  estoppel,  the  de- 
fendant will  be  permitted  to  file  an  answer  setting  up  other 
defences.  It  is  only  when  a  plea  in  equity  is  replied  to,  and 
then  proven  not  to  be  true  in  fact,  that  a  defendant  loses  any 
proper  advantage  by  filing  such  a  plea. 

§  622.  The  twenty-seventh  defence  may  be  interposed  by  a 
demurrer,  where  the  bill  clearly  states  the  time  when  the  in- 
fringement was  committed,  or  the  space  of  time  during  which 
it  was  carried  on.  Where  the  bill  simply  states  that  the  in- 
fringement occurred  during  the  life  of  the  patent,  and  where 
any  part  of  that  life  is  remote  enough  in  point  of  time  to  be 
barred  by  either  the  national  or  the  State  statute  of  limitation, 
if  either  is  applicable  thereto  ;  then  the  applicable  statute 
must  be  set  up  in  a  plea  or  in  an  answer,  in  order  to  avail  the 
defendant.  An  answer  is  to  be  preferred  to  a  plea  for  this 

1  Hughes  v.  Blake,  6  Wheaton,  472,  XV.,  Sec.  V. 

1821  ;   Rhode   Island   v.    Massachu-  s  Mitford  &  Tyler's  Equity  Plead- 

setts,    14  Peters,  257,  1840  ;   Myers  ing,    390  ;    Theberath  v.  Trimming 

v.  Dorr,  13  Blatch.  26,  1870  ;  Story's  Co.  5  Bann.  &  Ard.  585,  1880. 

Equity  Pleading,  Section  697  ;  Dan-  s  Sharp   v.  Reissner,  9  Fed.  Rep. 

iell's  Chancery  Practice,  Vol.  1,  Ch.  445,  1881. 


CHAP.  XX.]  ACTIONS    IN    EQUITY.  42T 

purpose,  in  all  cases  where  the  statute  bars  only  a  part  of  the 
right  upon  which  the  action  is  based  ;  because  an  answer  must 
generally  be  filed  to  the  residue  of  the  bill,  and  because  the 
proceedings  are  simplified  by  putting  all  the  defences  into  one 
pleading. 

Statutes  of  limitation  have  the  same  effect  upon  actions  in 
equity  in  the  Federal  courts,  that  they  have  upon  correspond- 
ing actions  at  law. ' 

§  623.  A  replication  is  required  to  be  filed  by  the  complain- 
ant, in  order  to  put  in  issue  those  points  wherein  the  answer 
disagrees  with  the  bill.  No  special  replication  is  permitted  in 
equity  in  the  United  States  courts. '  The  general  replication 
is  required  to  be  filed  on  or  before  the  rule  day,  which  next 
succeeds  that  upon  which  the  answer  is  due  and  is  filed  ; '  but 
if  filed  after  that  time,  it  may,  at  the  discretion  of  the  court, 
be  ordered  to  stand  ; '  or  it  may,  if  offered  after  that  time,  be 
allowed  by  the  court  to  be  filed  nunc  pro  tune  as  of  the  day 
whereon  it  was  due.* 

§  624.  Before  tracing  further  the  common  course  of  an  ac- 
tion in  equity  for  infringement  of  a  patent,  it  is  expedient  to 
make  a  short  excursion  into  the  field  of  those  subordinate 
bills  which  are  sometimes  required  to  be  filed,  before  decrees 
for  infringements  can  properly  be  entered.  Four  kinds  of 
such  bills  are  known  :  1.  Supplemental  bills.  2.  Bills  in 
the  nature  of  supplemental  bills.  3.  Bills  of  revivor.  4. 
Bills  in  the  nature  of  bills  of  revivor. 

§  625.  A  supplemental  bill  is  required,  where  the  original 
bill  was  filed  by  a  person  as  executor  or  administrator,  or  as 
assignee  in  bankruptcy  or  insolvency,  whenever  any  other 
person  succeeds  to  the  title  of  the  complainant  to  act  in  that 
representative  capacity."  Such  a  bill  is  also  necessary,  in 

1  Elmendorf  v.   Taylor,   10  Whea-  1881. 

ton,  168,  1825  ;  Miller  v.  Mclntyre,  6  Peirce  v.  West's  Executors,  1  Pe- 

6  Peters,  66,  1832  ;  Bank  of  United  ters'    Circuit    Court    Reports,    351, 

States  v.  Daniel,  12  Peters,  56,  1838.  1816. 

*  Equity  Rule  45.  8  Story's    Equity   Pleading,    Sec- 

8  Equity  Rule  66.  tion  340. 

4  Fisher  v.  Hayes,  6  Fed.  Rep.  77, 


4:28  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

order  to  subject  the  estate  of  the  defendant  to  a  decree,  where 
he  is  adjudged  bankrupt  or  insolvent  after  the  bill  against  him 
is  filed.2  His  assignee  in  bankruptcy  or  insolvency  is  the 
proper  person  to  be  made  the  defendant  to  such  a  bill."  He 
will  come  before  the  court  in  the  same  plight  as  that  of  the 
bankrupt,  and  will  be  bound  by  all  the  prior  proceedings  in 
the  case.  *  A  supplemental  bill  is  also  a  proper  one  to  be  filed 
against  a  stranger  to  the  original  bill,  where  he  has  conspired 
with  the  original  defendant  to  infringe  the  patent  in  suit  alter 
the  original  defendant  was  enjoined  from  doing  so  himself.* 
And  such  a  bill  is  proper,  where  a  patent  is  extended  after  the 
filing  of  the  original  bill,  if  the  defendant  continues  to  infringe 
the  patent  after  the  extension  is  granted.6  The  same  reasons 
which  support  the  latter  rule,  will  also  support  a  supplemental 
bill  based  on  a  new  patent  covering  some  feature  of  those 
doings  of  the  defendant  which  also  infringe  the  patent  origi- 
nally sued  upon  ;  and  will  also  support  such  a  bill  where  the 
defendant  so  changes  the  character  of  his  doings  pendente  lite 
as  to  make  them  infringe  some  other  patent  of  the  complain- 
ant, as  a  part  of  the  same  acts  that  constitute  infringements 
upon  the  patent  upon  which  the  original  bill  was  based. 

§  626.  A  bill  in  the  nature  of  a  supplemental  bill  is  called 
for,  where  the  original  bill  was  filed  by  a  person  in  his  own 
right,  whenever  that  right  passes  to  another  person  by  volun- 
tary assignment,  or  passes  from  the  complainant  to  his  as- 
signee in  bankruptcy  or  insolvency.6  This  rule  applies  not 
only  to  cases  where  the  entire  right  of  a  sole  complainant  is 
thus  transferred  pendente  lite,  but  also  to  cases  where  the  right 
of  one  of  several  complainants  is  so  transferred,  and  to  cases 
where  a  part  only  of  the  right  of  a  sole  complainant  is  made 
the  subject  of  a  voluntary  assignment  after  the  filing  of  the 
original  bill.7 

'  Mitford  <fe  Tyler's  Equity  Plead-  72,  1848. 

ing,  166.  *  Reedy  v.  Scott,  23  Wallace,  352, 

8  Sedgwick  v.  Cleveland,  7  Paige,  1874. 

(N.  Y.)  290,  1838.  «  Story's    Equity    Pleading,    Sec- 

3  Mitford  &  Tyler's  Equity  Plead-  tion  349. 

ing,  166.  '  Story's    Equity    Pleading,    Seo- 

4  Parkhurst  u.  Kinsman,  2  Blatch.      tion  346. 


CHAP.   XX.]  ACTIONS    IN    EQUITY.  429 

§  627.  A  bill  of  revivor  is  the  proper  means  of  reviving  and 
continuing  an  action  in  equity  which  has  abated  by  reason  of 
the  death  of  one  or  more  of  the  parties  thereto.1  It  is  to  be 
brought  by  or  against  the  executor  or  administrator  of  the  de- 
ceased party,  and  not  by  or  against  his  heirs.2  When  such  a 
bill  is  filed,  if  the  facts  warrant  him  in  so  doing,  the  defendant 
may  file  a  plea  denying  that  the  person  who  filed  the  bill  was 
entitled  to  do  so,3  or  interposing  some  statute  of  limitation 
applicable  to  bills  of  revivor.4  There  is  no  Federal  statute 
of  that  kind,  but  it  is  not  improbable  that  the  relevant  statutes 
of  the  several  States  are  applicable  to  bills  of  revivor  in  Fed- 
eral courts.6  Those  State  statutes  are  of  many  species.  In 
some,  the  limitation  begins  to  run  from  the  death  of  the  de- 
ceased complainant ;  and  in  others,  from  the  time  his  death  is 
suggested  in  the  case ;  and  in  others,  from  the  time  when  a 
scire facias  to  revive  is  served  on  the  person  entitled  to  re- 
vive. The  length  of  the  limitation  also  varies  in  the  different 
States.  Perhaps  the  shortest  time  is  six  months,  and  the 
longest  eighteen. 

Where  a  bill  of  revivor  is  filed  by  the  proper  person  within 
the  proper  time,  the  action  will  stand  revived  without  any 
pleading  being  filed  by  the  defendant.6  But  where  a  de- 
fendant dies  without  filing  a  sufficient  answer  to  the  original 
bill  and  the  amendments  thereto,  the  bill  of  revivor  which  is 
occasioned  by  his  death,  ought  to  pray  that  the  person  against 
whom  it  seeks  to  revive  the  suit,  be  compelled  to  answer  the 
original  bill  and  its  amendments,  or  so  much  thereof  as  re- 
mains unanswered.7  After  an  action  in  equity  has  been  duly 
revived,  it  proceeds  in  the  new  form,  unaffected  by  the  change 
of  name ;  and  all  the  testimony  theretofore  taken  may  be  there- 
after used,  precisely  as  if  no  abatement  or  revivor  had  occurred.* 

1  Story's  Equity    Pleading,    Sec-          5  Revised  Statutes,  Section  721. 
tion  354.  «  Equity  Eule  56. 

*  Story's  Equity  Pleading,  Sec-  '  Story's  Equity  Pleading,  Sec. 
tion  354a.  375 ;  Mitford  &  Tyler's  Equity 

3  Story's  Equity    Pleading,    Sec-      Pleading,  174. 

tions  829  and  830.  8  Vattier  v.  Hinde,  7  Peters,  265, 

4  Story's    Equity    Pleading,    Sec-      1833. 
tion  831. 


430  ACTIONS    IN    EQUITY.  [CHAP.  XX. 

§  628.  A  bill  in  the  nature  of  a  hill  of  revivor  is  required 
where  the  complainant  in  the  original  bill  assigned  the  right 
of  action  and  the  patent  upon  which  it  was  based,  and  then 
died  before  the  assignee  took  his  place  in  the  action,  by  means 
of  a  bill  in  the  nature  of  a  supplemental  bill.  A  bill  of  the 
latter  sort  will  not  answer  the  purpose,  unless  it  is  filed  before 
the  death  of  the  original  complainant  ;  because  that  death  will 
cause  an  abatement  of  the  suit,  and  because  only  bills  of  re- 
vivor, or  bills  in  the  nature  of  bills  of  revivor,  can  revive  an 
abated  action  in  equity.1  Bills  of  revivor  can  be  filed  only  by 
privies  in  law,  such  as  executors  and  administrators  ;  and  not 
by  privies  in  estate,  such  as  devisees  and  assignees."  For  the 
latter  class  of  persons  bills  in  the  nature  of  bills  of  revivor  are 
available,  and  by  means  of  such  a  bill,  an  assignee  who  did 
not  file  a  bill  in  the  nature  of  a  supplemental  bill  before  the 
death  of  the  original  complainant,  may  draw  to  himself  the 
benefit  of  the  original  action,  in  whatever  stage  it  may  have 
been  at  the  date  of  the  abatement.8  Such  a  bill  is  also  the 
proper  means  of  reviving  an  action  which  has  abated  at  the 
death  of  the  administrator  or  executor  who  was  prosecuting  it 
in  his  representative  capacity,  if  the  person  entitled  to  revive 
represents  the  original  testator  or  intestate,  and  not  the  de- 
ceased executor  or  administrator.4 

§  629.  A  bill  of  revivor  and  supplement  is  merely  a  com- 
pound of  a  supplemental  bill,  and  of  a  bill  of  revivor.6  It  is 
therefore  proper  to  be  filed  when  either  of  the  facts  which 
justify  a  supplemental  bill  and  either  of  the  facts  which  re- 
quire a  bill  of  revivor,  occur  in  one  action.  So  also,  any  two 
or  more  of  the  four  sorts  of  bills  mentioned  in  the  four  last 
sections,  may  be  united  in  one  bill,  whenever  either  of  the 
facts  which  require  either  of  those  bills,  occurs  in  the  same 
action  with  any  of  the  facts  which  requires  any  of  the 
others. 

1  Equity  Rule  66.  <  Story's    Equity    Pleading,    Sec. 

*  Story's    Equity    Pleading,    Sec.  382. 

379.  *  Mitford  &  Tyler's  Equity  Plead- 

3  Slack  v.  Walcott,  3  Mason,  511,  ing,  177. 
1825. 


CHAP.   XX.]  ACTIONS    IN    EQUITY.  431 

§  630.  Leave  of  court  is  a  prerequisite  to  the  filing  of  sup- 
plemental bills,  and  bills  in  the  nature  of  supplemental  bills  ; 
and  it  is  to  be  obtained  upon  proper  cause  shown,  and  due 
notice  to  the  opposite  party.1  But  neither  bills  of  revivor 
nor  bills  in  the  nature  of  bills  of  revivor  require  any  such 
order,  for  they  may  be  filed  in  the  clerk's  office  at  any  time.* 
The  reason  of  this  difference  is  that  neither  of  the  last  two 
kinds  of  bills  are  useful  except  in  cases  of  death.  There  can 
be  no  temptation  to  file  such  a  bill  as  either,  unless  a  death 
has  occurred  among  the  parties  to  the  action  ;  and  where  such 
a  death  has  occurred,  there  can  be  no  objection  to  the  filing  of 
one  or  the  other.  But  the  first  two  sorts  of  bills  are  based 
upon  events  about  the  true  character  of  which  counsel  may  be 
mistaken  in  any  given  case,  and  it  is  therefore  necessary,  in 
order  to  avoid  an  improper  accumulation  of  pleadings,  that 
the  court  should  pass  upon  the  propriety  of  such  bills  before 
they  are  filed. 

§  631.  No  demurrer  plea  or  answer  is  ordinarily  required  to 
be  filed  to  a  bill  of  revivor,  or  to  a  bill  in  the  nature  of  a  bill 
of  revivor.3  But  defendants  are  always  required  to  demur, 
plead,  or  answer  to  supplemental  bills  ;  and  to  bills  in  the  na- 
ture of  supplemental  bills.4  Where  a  bill  of  either  of  those 
kinds  shows  on  its  face  that  the  person  who  filed  it  was  not  a 
proper  person  to  do  so,  the  objection  may  be  made  by  a  de- 
murrer,6 and  when  that  fault  exists,  but  does  not  appear  on 
the  face  of  the  bill,  the  defence  grounded  upon  it  may  be 
made  by  a  plea.'  Other  defences  can  be  made  to  supplement- 
al bills,  or  to  bills  in  the  nature  of  supplemental  bills,  in  the 
same  forms  and  in  the  same  circumstances  in  which  correspond- 
ing defences  can  be  made  to  original  bills  for  infringement.7 

§  632.  The  hearing  of  an  action  in  equity  for  infringment 
of  a  patent,  may  take  place  before  one  of  the  judges  of  the 
court  sitting  alone,  or  before  several  judges  sitting  together, 

1  Equity  Rule  57.  tion  612. 

*  Equity  Rule  56.  «  Story's    Equity    Pleading,    Sec- 

»  Equity  Rule  56.  tion  827. 

4  Equity  Rule  57.  7  Story's    Equity   Pleading,    Sec- 

6  Story's    Equity    Pleading,  Sec-      tions  611  and  826. 


432  ACTIONS    IN    EQUITY.  [CHAP.    XX. 

or  before  a  judge  and  a  jury,'  or  before  a  master  in  chan- 
cery.* Judges  constitute  the  best  tribunals  for  the  pur- 
pose ;  but  as  either  of  the  other  methods  of  trial  may  be  re- 
sorted to  at  the  will  of  the  court,  it  is  expedient  to  outline 
the  law  relevant  to  all  three. 

§  633.  An  interlocutory  hearing  by  a  judge,  in  a  patent  ac- 
tion in  equity,  is  one  which  occurs  after  the  evidence  relevant 
to  the  validity  of  the  patent  and  its  infringement  by  the  de- 
fendant has  been  taken,  and  before  the  case  is  referred  to  a 
master  to  take  and  state  an  account  of  profits  and  damages. 
The  final  hearing,  which  occurs  after  the  master  lias  taken  that 
account  and  filed  his  report,  generally  involves  nothing  but 
the  correctness  of  that  report,  and  it  therefore  may  ap 
propriately  be  treated  in  the  chapter  on  profits.  So  also,  th 
preliminary  hearing,  which  occurs  when  a  preliminary  in- 
junction is  applied  for,  may  properly  be  discussed  in  tho 
chapter  on  injunctions.  The  interlocutory  hearing  is  gener- 
ally the  pivotal  point  of  a  litigation.  "Where  it  results  in  the 
success  of  the  defendant  and  consequent  dismissal  of  the  bill, 
it  becomes  a  final  hearing. 

§  634.  Questions  of  law,  in  equity  patent  cases,  are  to  be 
decided  according  to  the  relevant  rules  of  law  and  equity  in 
force  in  the  United  States  courts.  The  sources  of  those  rules 
are  the  statutes  of  the  United  States,  and  the  decisions  of  the 
United  States  Supreme  and  Circuit  Courts,  and  those  decisions 
of  the  chancellors  of  England  which  were  made  before  the 
adoption  of  the  Constitution  of  the  United  States.  Later  de- 
cisions of  English  courts  sometimes  indicate  what  the  law  is, 
but  no  such  decision  is  of  any  binding  authority  in  any  United 
States  court.  Where  such  a  decision  is  strictly  relevant  to  a 
question  at  bar,  and  is  supported  by  good  reasoning,  it  may 
be  followed  by  a  United  States  judge  ;  but  if,  as  is  frequently 
the  case,  it  refers  to  a  substantially  different  state  of  statute  law 
from  that  to  which  United  States  patent  cases  are  subject,  or 
if  it  was  fallaciously  reasoned  out  by  the  judge  who  delivered 

1  18  Statutes  at  Large,  Part  3,  Ch.  '  Parker  v.  Hatfield,  4  McLean,  61. 

77,  Section  2,  p.  316.  1845. 


CHAP.   XX.]  ACTIONS    IN    EQUITY.  433 

it,  such  a  decision  may  properly  be  disregarded  in  the  Fed- 
eral courts.  The  decisions  of  State  courts  fall  in  the  same 
category  in  this  respect  with  the  modern  English  decisions, 
except  in  cases  where  the  United  States  statutes  direct  the 
Federal  courts  to  follow  the  laws  of  the  several  States.  In 
those  cases,  the  State  laws  are  binding  on  the  Federal  judges, 
not  because  the  States  have  any  authority  to  prescribe  rules  to 
Federal  courts,  but  because  the  national  legislature  has  adopted 
those  particular  State  laws,  instead  of  framing  and  enacting 
corresponding  regulations  of  its  own. 

Where  questions  arise  to  which  no  direct  answer  can  be 
found  in  the  recognized  sources  of  the  law,  it  becomes  the 
duty  of  the  judge  to  deduce  a  proper  answer,  by  means  of 
just  reasoning,  from  the  general  principles  of  law,  of  equity, 
and  of  justice.  lie  will  generally  find  assistance  in  that  work, 
by  consulting  the  obiter  dicta  of  courts  and  the  commentaries 
of  text-writers  ;  but  no  obiter  dictum,  and  no  text-book,  is  of 
any  binding  authority.  The  points  of  law  actually  decided  by 
the  United  States  Supreme  Court  are  generally  binding  on  all 
other  United  States  courts,  regardless  of  the  reasons  which 
support  them. '  There  is  an  exception  to  this  rule,  where  the 
Supreme  Court  has  decided  the  same  question  both  ways.  In 
such  a  case  the  last  decision  governs,  if  it  expressly  overruled 
the  first.  If  it  simply  ignored  the  first,  it  may  have  resulted 
from  the  first  decision  not  being  called  to  the  attention  of  the 
justices  who  rendered  the  second.  In  such  a  case  it  is  probably 
the  duty  of  a  circuit  court  to  follow  the  most  reasonable  of  the 
two  decisions,  regardless  of  seniority.  And  there  may  also 
arise  an  exception  to  the  general  rule,  if  the  Supreme  Court 
should  assume  to  legislate,  under  the  guise  and  form  of  judi- 
cial decision.  In  a  plain  case  of  that  kind,  the  lower  courts 
would  be  bound  to  ignore  the  alleged  precedent  in  making  up 
their  .judgments,  because  they  are  bound  to  concert  their 
judgments  agreeably  to  the  Constitution  and  laws  of  the  United 


1  American      Middlings     Purifier       Co.  v.   Davis,. 3  Bann.   &   Aid.  116,. 
Co.  v.  Christian,  3  Bann.  &  Ard.  44,       187.7.. 
1877  ;    Goodyear    Dental  Vulcanite 


434  ACTIONS  IN  EQUITY.  [CHAP.  xx. 

States,1  and  because  judicial  legislation  is  contrary  to  that 
Constitution,  and  therefore  external  to  those  laws.a  The 
points  of  law  actually  decided  by  a  circuit  justice  or  circuit 
judge,  in  either  of  the  nine  circuits  of  the  United  States,  un- 
less they  are  reversed  by  the  Supreme  Court,  are  binding  upon 
all  the  other  judges  who  may  hold  a  circuit  court  in  that  cir- 
cuit.8 Such  decisions  are  said  to  be  the  law  of  the  circuit. 
And  the  points  of  law  actually  decided  by  any  judge  hold- 
ing any  United  States  circuit  court,  are  followed  by  every 
other  judge  holding  sucli  a  court,  unless  they  have  been  re- 
versed by  the  Supreme  Court,  or  are  contrary  to  other  deci- 
sions of  equal  claims  to  respect,  or  clearly  appear  to  be  erro- 
neous. 

§  635.  Questions  of  fact  depend  upon  the  evidence  in  the 
particular  cases  in  which  they  arise,  except  so  far  as  they  de- 
pend upon  matters  of  which  courts  take  judicial  notice. 
Questions  of  fact  in  patent  cases  often  require  for  their  solu- 
tion a  severely  logical  process  of  reasoning  from  the  testimony 
in  the  record.  It  sometimes  occurs  that  the  evidence  in  a 
number  of  cases,  pending  in  a  number  of  courts,  is  substan- 
tially the  same.  Where  one  such  case  has  been  carefully 
argued  and  deliberately  decided,  all  the  other  courts  follow 
that  decision,  as  a  matter  of  comity,  unless  it  has  been  reversed 
by  the  Supreme  Court.4  Where  questions  of  fact  in  patent 
cases  have  been  decided  by  the  Supreme  Court,  that  decision 
is  conclusive  in  all  other  patent  cases,  so  far  as  the  facts  which 
are  involved  are  identical.6 

§  636.  The  evidence  which  a  complainant  is  required  to  pro- 
duce to  support  his  bill,  in  an  action  in  equity,  is  the  same 
as  that  which  a  plaintiff  in  an  action  at  law  is  required  to  in- 


1  Eevised  Statutes,  Section  712.  Works  v.  Hecker,  2  Barm.  &  Ard.  360. 

*  Constitution,  Article  I.  Sec.  1.  1876  ;    Searls  v.    Worden,   11    Fed. 

8  Hawes  v.  Cook,  5  Off.  Gaz.  493,  Rep.   502,   1882  ;    American    Ballast 

1874.  Log  Co.  v.  Cotter,  11  Fed.  Rep.  728, 

4  Goodyear  Dental  Vulcanite  Co.  1882. 

«.  Willis,  1  Bann.  &  Ard.  570,  1874  ;  &  American     Middlings      Purifier 

Putnam  v.  Yerrington,  2   Bann.    <fc  Co.  v.  Christian,  3  Bann.  &  Ard,  44, 

Aid.  241,  1876  ;  Rumford  Chemical  1877. 


CHAP.   XX.]  ACTIONS    IN    EQUITY.  435 

troduce  in  support  of  his  declaration,  except  that  in  an  action 
in  equity  the  complainant  must  introduce  evidence  to  excuse 
his  delay  in  filing  his  bill,  where  a  long  delay  to  file  it  occurred 
after  the  infringement  took  place  ;  and  except  that  till  after 
the  interlocutory  hearing  he  need  introduce  no  evidence  relevant 
to  profits  or  to  damages.  To  ascertain  the  amount  of  the  de- 
fendant's profits  and  the  amount  of  the  complainant's  damages 
in  a  case  of  infringement,  are  the  purposes  of  a  reference  to  a 
master  in  chancery.  If,  in  order  to  entitle  a  complainant  to  a 
decree  directing  such  a  reference,  he  were  obliged  to  introduce 
proof  that  some  damages  were  incurred  by  him,  and  that  some 
profits  were  made  by  the  defendant,  a  complicated  account 
might  have  to  be  taken  merely  to  ascertain  whether  a  refer- 
ence ought  to  be  had  to  a  master  to  take  it  over  again.  It  is 
therefore  the  universal  practice,  to  postpone  all  evidence  rele- 
vant to  profits  and  damages,  till  an  interlocutory  hearing  on 
the  questions  of  validity  and  infringement  has  been  had,  and 
till  those  questions  have  been  decided.  There  is  a  presump- 
tion, that  profits  resulted  from  the  proven  infringement,  which 
is  strong  enough  to  entitle  a  complainant,  who  has  prayed  for 
that  relief,  to  a  decree  for  an  account  of  profits.1 

§  637.  The  evidence  which  is  required  to  support  either  of 
the  twenty-seven  defences  which  are  common  to  actions  at  law 
and  actions  in  equity,  is  the  same  in  both  those  forms  of  pro- 
ceeding. Of  the  two  defences  which  are  peculiar  to  equity, 
that  of  non- jurisdiction  is  one  which  seldom  or  never  requires 
any  evidence  to  support  it  ;  and  laches  is,  prima  facie,  sup- 
ported by  the  fact  of  the  long  lapse  of  time  which  is  deducible 
from  the  complainant's  proofs,  where  such  a  defence  has  any 
foundation  at  all.  Where  the  complainant  introduces  evi- 
dence to  excuse  the  delay,  it  may  be  necessary  for  the  defend- 
ant to  negative  that  evidence  by  other  proof,  or  to  prove  facts 
which  show  the  complainant's  excuse  to  be  invalid  or  insuffi- 
cient. 

§  638.  Testimony  in  actions  in  equity  for  infringements  of 
patents  is  taken  wholly  by  depositions  in  writing,  except  in  a 

1  Andrews  v.  Creegan,  7  Fed.  Rep.  477,  1881. 


ACTIONS    IN    EQUITY.  [CHAP.  XX. 

few  districts,  where,  in  pursuance  of  local  rules  of  court,  it 
may,  by  the  consent  of  both  parties,  be  taken  orally  in  open 
court. 

§  639.  Depositions  may  be  taken  by  commission,  upon  in- 
terrogatories filed  by  the  party  taking  it  out,  and  upon  cross- 
interrogatories  filed  by  the  adverse  party.1  If  either  party  so 
requires,  all  the  depositions  in  a  case  must  be  taken  orally,  in 
writing,  before  an  examiner,  in  the  presence  of  the  parties  or 
their  agents,  by  their  counsel  or  solicitors,  and  in  the  method 
of  examination  and  cross-examination  used  in  common-law 
courts.*  Where  the  depositions  are  to  be  taken  in  the  latter 
mode,  the  court  may,  on  motion  of  either  party,  assign  a  time 
within  which  the  complainant  shall  take  his  evidence  in  sup- 
port of  the  bill  ;  and  a  time  thereafter,  within  which  the  de- 
fendant shall  take  his  evidence  in  defence  ;  and  a  time  there- 
after, within  which  the  complainant  shall  take  his  evidence  in 
reply.3  Depositions  may  also  be  taken  in  equity  cases,  in  the 
method  heretofore  explained  for  taking  depositions  in  actions 
at  law,  whenever  the  same  facts  exist  to  justify  that  mode  of 
practice.*  As  facts  to  justify  depositions  taken  under  that 
system  are  of  frequent  occurrence  in  patent  cases,  and  as  that 
system  is  simpler  than  any  other  prescribed  by  law,  its  use  is 
often  resorted  to  in  patent  litigation. 

It  is  to  be  observed,  relevant  to  all  methods  of  taking  dep- 
ositions, that  each  item  of  the  procedure  which  is  prescribed 
by  rule  or  by  statute,  must  be  strictly  followed  in  every  case, 
unless  it  is  waived  by  a  written  stipulation  of  the  parties.  It 
is  sometimes  the  practice  of  counsel  at  the  beginning  of  a  liti- 
gation to  enter  into  a  formal  stipulation,  filed  in  the  case  and 
providing  that  after  a  reasonable  notice  in  writing,  the  deposi- 
tion of  any  witness  may  be  taken  on  behalf  of  either  party, 
orally  in  writing,  by  question  and  answer,  by  and  before  any 
notary  public  authorized  to  administer  an  oath  at  the  place  of 
taking,  without  his  being  furnished  with  any  copy  of  any  bill 

1  Equity  Rule  67.  4  Equity  Rule  68  ;  Section  535  of 

*  Equity  Rule  67.  this  book. 

» Equity  Rule  67. 


CHAP.   XX.]  ACTIONS   IN    EQUITY.  437 

or  answer,  and  otherwise  in  accordance  with  the  sixty-seventh 
Equity  Rule  ;  and  may,  when  completed,  be  delivered  to  the 
counsel  of  the  party  in  -whose  behalf  the  deposition  is  taken, 
and  may  be  produced  and  used  on  the  hearing  with  the  same 
effect  as  if  taken  and  transmitted  into  court  in  all  respects  as 
prescribed  by  that  rule.  Such  a  stipulation  provides  a  more 
convenient  method  of  taking  depositions  than  any  provided 
by  rule  of  court  or  law  of  Congress,  and  where  counsel  are 
honest,  such  a  method  is  sufficiently  safe.  The  authority  of  a 
notary  public  to  administer  a  binding  oath  in  such  a  case,  is 
founded  on  a  statute  of  the  United  States.1  Stipulations  may 
also  provide  for  an  enlargement  of  time  for  taking  deposi- 
tions ; 4  which  time,  unless  enlarged  by  a  stipulation  or  by  an 
order  of  court,  covers  three  months  and  no  more.3  These 
must  probably  be  held  to  be  lunar,  and  not  calendar  months  ; 
for  the  common-law  definition  of  the  word  month  has  never 
been  changed  by  United  States  authority.* 

§  640.  Depositions  taken  in  any  other  case,  may  be  .used  in 
any  action  in  equity,  if  each  party  therein  was  a  party  to  the 
action  in  which  they  were  taken,  or  is  in  privity  with  a  party 
to  that  action.  But  where  either  party  in  the  new  action 
was  not  a  party  to  the  former  one,  and  is  not  in  privity  with 
any  party  thereto,  no  deposition  taken  in  the  former  suit  can 
be  used  in  the  new  one  ;  for  no  deposition  can  be  read  against 
a  party,  who  could  not  read  it  in  his  favor  if  it  were  favorable 
to  him.5 

§  641.  Documentary  evidence  is  generally  introduced  before 
the  examiner,  within  the  same  time  that  the  oral  testimony  is 
required  to  be  taken,  and  that  is  the  necessary  course  where 
documents  require  to  be  proven  by  oral  testimony.  But  docu- 
ments which  prove  themselves,  may  be  introduced  on  the  hear- 
ing without  having  been  put  in  evidence  before  the  examiner, 


1  19  Statutes  at  Large,  Ch.  304,  p.  4  Sec.  125  of  this  book. 

206.  8  Dale  v.  Rosevelt,  1  Paige  (N.  Y.) 

4  Equity  Rule  67.  5>5,  1828  ;   Paynes  v.  Coles,  1  Mun- 

3  Equity  Eule  69.  ford  (Va.)  394,  1810. 


4:38  ACTIONS    IN    EQUITY.  [CHAP.   XX. 

unless  such  a  practice,  in  a  particular  case,  would  operate  as  a 
surprise  upon  the  opposite  party.1 

§  642.  A  jury  of  not  less  than  five  and  not  more  than  twelve 
persons  may  be  empanelled  by  any  United  States  Circuit 
Court,  when  sitting  in  equity  for  the  trial  of  a  patent  cause, 
for  the  purpose  of  submitting  to  them  such  questions  of  fact 
in  the  case  as  the  court  shall  deem  it  expedient  to  submit  ;  and 
the  verdict  of  such  a  jury  is  treated  in  the  same  mariner  and 
with  the  same  effect  as  in  the  case  of  issues  sent  from  chan- 
cery to  a  court  of  law  and  returned  with  such  findings.* 
Therefore  such  a  verdict  is  only  advisory,  and  never  conclu- 
sive upon  the  court.  If  the  judge  disagrees  in  opinion  with 
the  jury  relevant  to  the  questions  of  fact  covered  by  the  ver- 
dict, he  may  enter  a  decree  contrary  thereto.3  But  the  regu- 
lar course  of  proceeding  in  such  a  case  is  to  enter  a  decree  in 
accordance  with  the  verdict,  unless  the  party  against  whom  it 
was  found  moves  the  court  for  a  new  trial.  A  new  trial  in 
such  a  case  is  granted  or  refused  according  as  the  judge  thinks 
the  verdict  was  right  or  was  wrong  ;  and  without  special 
regard  to  any  errors,  or  freedom  from  errors,  which  character- 
ized the  admission  or  rejection  of  evidence  on  the  trial,  or  the 
instructions  which  were  given  or  those  which  were  refused  by 
the  judge.  Where  a  new  trial  is  refused,  and  a  decree  is  en- 
tered in  accordance  with  the  verdict,  if  the  defeated  party 
would  take  the  case  to  the  Supreme  Court  for  review,  he  must 
do  so  on  an  appeal  from  the  decree,  and  not  upon  a  writ  of 
error  as  from  a  judgment  entered  upon  a  verdict  in  an  action 
at  law.  In.  a  properly  prepared  case,  the  Supreme  Court  will 
decide  whether,  on  the  whole,  the  decree  was  right  or  was 
wrong,  but  it  will  not  pass  upon  the  correctness  or  incorrect- 
ness of  the  rulings  of  the  judge  at  the  jury  trial.  Therefore 
the  evidence  taken  at  the  jury  trial  should  be  preserved,  if 
there  is  any  intention  to  take  the  case  to  the  Supreme  Court, 
but  no  bill  of  exceptions  in  the  case  is  necessary  or  is  proper.4 

1  Knapp  v.  Shaw,  15  Fed.  Eep.  *  Silsby  u.  Foote,  1  Blatch,  545, 

115,  1883.  and  20  Howard,  290,  1857. 

*  18  Statutes  at  Large,  Part  3,  Ch.  4  Watt  v.  Starke,  101  U.  S.  247, 

77,  Section  2,  p.  316.  1879. 


CHAP.  XX.]  ACTIONS    IN    EQUITY.  439 

§  643.  A  master  in  chancery  may  be  deputed  by  a  circuit 
court  to  try  any  question  of  fact  in  a  patent  case,  and  to  report 
his  conclusion  thereon.1  But  such  a  report  is  advisory  only, 
and  no  decree  will  be  entered  upon  it,  if  either  party  can  con- 
vince the  judge  that  it  was  wrong.  Exceptions  to  the  master's 
report  are  the  proper  means  of  appeal  from  his  conclusion. 
If,  on  such  exceptions,  the  judge  concludes  that  the  master  was 
wrong  in  any  respect,  he  may  send  the  case  back  to  him,  with 
directions  to  make  a  new  report,  and  with  prescriptions  of  new 
criteria  by  which  to  make  it ;  *  or  he  may  proceed  to  try  the 
questions  of  fact  himself,  if  that  course  appears  to  be  more 
convenient.  The  rules  of  practice  which  regulate  the  taking 
of  evidence  by  masters  in  chancery,  and  regulate  the  hearings 
before  them,  and  the  filing  of  exceptions  to  their  reports,  are 
the  same,  when  they  are  directed  to  ascertain  the  truth  relevant 
to  such  questions  of  fact  as  novelty  or  infringement,  that  they 
are  in  the  more  common  cases  wherein  they  are  directed  to  take 
and  state  an  account  of  profits  and  damages. 

§  644.  An  interlocutory  decree,  in  an  equity  patent  case,  is 
a  decree  which  adjudges  that  the  patent  sued  upon  is  valid  ;  and 
that  the  defendant  has  infringed  it  ;  and  that  a  master  in 
chancery  be  directed  to  take  and  report  an  account  of  the 
profits  which  the  defendant  realized  from  that  infringement, 
and  of  the  damages  which  the  complainant  sustained  by  reason 
thereof  ;  and  sometimes  that  the  defendant  be  permanently  en- 
joined from  further  infringement.  No  appeal  from  such  a 
decree  lies  to  the  Supreme  Court.*  Until  after  a  final  decree 
has  been  made  for  a  specific  money  recovery,  in  pursuance  of 
an  account  of  profits  and  damages,  the  case  is  within  the  con- 
trol of  the  court.4  Attempts  to  secure  the  reconsideration  of 
interlocutory  decrees  are  not  uncommon  in  patent  litigation. 
Therefore  the  attention  may  properly  be  given,  at  this  point, 
to  the  methods  in  which  such  attempts  may  regularly  be 

1  Parker  v.  Hatfield,  4  McLean,  61,  650,  1849  ;  Humiston  v.  Stainthorp, 

1845.  2  Wallace,  106,  1864. 

*  Cawood  Patent,  94  U.  S.  708,  4  Beeves  v.  Keystone  Bridge  Co.  2 

1876.  Bann.  &  Ard.  256,  1876. 

1  Barnard  v.   Gibson,  7  Howard, 


440  -ACTIONS    IN   EQUITY.  [CHAP.   XX. 

made  ;  and  to  the  grounds  upon  which  they  must  be  based 
in  order  to  succeed. 

§  645.  A  petition  for  a  rehearing  may  be  filed  at  any  time 
before  the  end  of  the  term  at  which  the  final  decree  in  the 
case  is  entered  and  recorded  ;  '  but  not  after  that  termina- 
tion ; a  unless  the  case  is  one  which  cannot  be  appealed  to  the 
Supreme  Court ;  in  which  event  it  may  be  admitted,  in  the 
discretion  of  the  court,  at  any  time  before  the  end  of  the  next 
succeeding  term.3  Such  a  petition  may  be  based  upon  an 
apparent  error  of  the  judge  in  deciding  upon  the  case  as  it  was 
presented  to  him  in  the  record  ;  or  it  may  be  based  on  facts 
which  were  discovered  after  the  entry  of  the  decree  which  the 
petition  asks  to  have  reconsidered.  These  two  kinds  of  rehear- 
ing are  quite  diiferent  from  each  other,  not  only  in  respect  of 
the  grounds  upon  which  they  are  based,  but  also  in  respect  of 
the  methods  by  which  they  are  obtained. 

§  646.  A  rehearing  for  matter  apparent  on  the  face  of  the 
record,  may  be  applied  for  by  a  petition  signed  by  counsel,  and 
stating  the  ground  upon  which  the  rehearing  is  prayed.' 
That  ground  must  be  sufficient  to  convince  the  judge  that  the 
decree  was  perhaps  erroneous.6  In  order  to  do  that,  it  is 
necessary  to  point  out  some  particular  misapprehension  of  the 
law,  or  some  particular  mistake  in  respect  of  the  evidence,  into 
which  the  judge  was  unfortunate  enough  to  fall.  It  is  useless 
to  ask  for  a  rehearing  of  this  kind,  on  the  general  ground  that 
the  decision  is  thought  by  counsel  to  be  wrong.  Such  a  re- 
quest was  once  presented  to  Justice  WOODBURY,  but  it  met  the 
following  apt  reply  :  "  It  is  hardly  in  the  power  of  the 
human  mind,  surely  not  of  the  sound  judicial  mind,  after 
forming  deliberate  opinions  after  long  argument  and  much 
examination,  to  change  at  once  its  conclusions,  merely  on  a 
repetition  of  the  same  arguments  and  the  same  facts.  Opin- 
ions thus  liable  to  change,  would  be  as  worthless  after  al- 


1  Equity  Rule  88.  «  Equity  Rule  88. 

1  Barker  v.  Stowe,  4  Barm.  &  Ard.  5  American  Diamond  Book  Boring 

485,  1879.  Co.  v.  Sheldon,  18  Blatch.  50,  1880. 
»  Equity  Rule  88. 


CHAP.   XX.]  ACTIONS   IN   EQUITY.  441 

tered,  as  they  were  before.  And  hence  it  is  wisely  provided 
in  most  judicial  systems,  as  in  ours,  that  where  nothing  new 
exists  to  justify  a  change  in  judgment,  a  general  review  on 
the  old  grounds  should  be  made  by  different  persons,  by  a 
higher  and  appellate  tribunal." 

§  647.  A  rehearing  on  account  of  newly  discovered  evidence, 
must  be  applied  for  as  soon  as  possible  after  its  discovery,* 
by  a  petition,  verified  by  the  oath  of  the  applicant  or  of  some 
other  person,8  and  stating  the  nature  of  the  alleged  newly 
discovered  evidence,  and  that  it  was  not  known  to  the  peti- 
tioner till  after  the  decree  was  rendered,  and  also  what  dili- 
gence was  exercised  in  searching  therefor  prior  to  that  time,4 
and  praying  for  leave  to  file  a  supplemental  bill  in  the  nature 
of  a  bill  of  review,  and  for  a  rehearing  of  the  cause  at  the 
time  when  the  issues  raised  by  that  bill  shall  be  ready  for  hear- 
ing.5 The  function  of  such  a  bill  is  to  furnish  a  foundation 
in  the  pleadings  for  evidence  on  both  sides  of  the  new  issues 
of  fact  to  determine  which  the  rehearing  is  granted.  When 
such  a  petition  is  filed,  it  must  be  supported  by  affidavits  of 
the  witnesses  who  are  expected  to  testify  to  the  newly  discov- 
ered facts  which  are  sought  to  be  brought  into  the  case,'  and 
also  by  affidavits  showing  that  those  facts  were  not  discovered 
by  the  petitioner  till  after  the  former  hearing,7  and  could 
not,  with  reasonable  diligence,  have  been  discovered  sooner 
than  they  were.8  Such  a  petition  may  be  answered  by 
counter  affidavits  tending  to  show  that  part  or  all  of  the  state- 
ments in  the  petitioner's  affidavits  are  untrue.'  To  grant  the 
prayer  of  the  petition,  the  court  must  be  satisfied  that  the  ap- 


1  Tufts  v.  Tufts,  3   Woodbury  &  •  Buerk  v.  Imhaeuser,  2  Bann.  & 

Minot,  429,  1847.  Ard.  452,  1876. 

8  Blaudy  u.  Griffith,  6  Fisher,  435,  '  Beeves  v.  Keystone  Bridge  Co.  2 

1873.  Bann.  &  Ard.  256,  1876. 

8  Equity  Rule  88.  8  India  Rubber  Comb  Co.  v.  Phelps, 

4  Allis  v.  Stowell,  5  Bann.  &  Ard.  4  Fisher,  317,  1870  ;    Hitchcock  v. 

459,  1880.  Tremaine,  9  Blatch.  551, 1872 ;  Barker 

*  Dexter  v.  Arnold,  5  Mason,  310,  v.  Stowe,  4  Bann.  &  Ard.  405,  1878. 

1829  ;    Daniell's  Chancery  Practice,  »  I  Unruly  u.  Griffith,  6  Fisher,  435, 

1537.  1873. 


442  ACTIONS   IN    EQUITY.  [CHAP.  XX. 

plicant's  affidavits  are  probably  true,1  and  clearly  material,* 
and  that  the  facts  they  set  forth  were  not  known  to  the  peti- 
tioner at  the  time  of  the  former  hearing,  and  could  not,  with 
reasonable  diligence,  have  been  discovered  prior  to  that  event.' 
Eehearings  will  not  be  granted  to  enable  parties  to  search  for 
further  evidence  ; 4  nor  to  strengthen  their  expert  testi- 
mony ;  *  nor  to  amend  their  pleadings  so  as  to  make  certain 
evidence  admissible,  which  was  taken  before  the  former  hear- 
ing, and  was  disregarded  thereon,  because  not  supported  by 
any  pleading  ; 6  nor  to  produce  cumulative  evidence  on  ques- 
tions of  fact  which  were  in  issue  at  the  former  hearing  ; 7  nor 
to  correct  errors  of  management  committed  by  the  petitioner's 
counsel.8 

§  648.  A  supplemental  bill  in  the  nature  of  a  bill  of  review, 
should  state  the  newly  discovered  facts  upon  which  it  is  based, 
and  should  pray  that  the  cause  may  be  heard  with  respect  to 
the  new  matter,  at  the  same  time  that  it  is  reheard  upon  the 
original  bill,  and  that  the  party  who  files  the  subordinate  bill 
may  have  such  relief  as  the  nature  of  his  case  requires.  The 
proceedings  upon  a  bill  of  this  description  are  the  same  as 
those  upon  original  bills  in  general.'  No  order  for  a  rehear- 
ing, made  after  an  interlocutory  decree,  and  while  an  account 
of  profits  and  damages  is  being  taken  by  a  master  in  chancery, 
will  stop  the  taking  of  that  account,  unless  the  court  enters  a 
special  order  directing  the  master  to  suspend  proceedings 
therein.10 


1  Munson  v.  New   York,  11  Fed.  5  Hitchcock  v.  Tremaine,  5  Fisher, 

Rep.  72,  1882.  538,  1872. 

1  Buerk  u.  Imhaeuser,  2   Bann.  &  8  American  Saddle  Co.  v.  Hogg,  6 

Ard.  452,  1876.  Fisher,  67,  1872. 

1  Prevost  v.  Gratz,  1  Peters,  Circuit  7  Blandy  v.  Griffith,  6  Fisher,  435, 

Court  Reports,  364.  1816  ;  Baker  v.  1873. 

Whiting,  1  Story,  234,  1840  ;  Reeves  8  Ruggles  v.  Eddy,  11  Blatch.  524, 

v.  Keystone  Bridge  Co.  2  Bann.  &  1874. 

Ard.  258,  1876  ;  Page  v.  Telegraph  »  Darnell's     Chancery      Practice, 

Co.  18  Blatch.  122,  1880.  1537. 

4  Munson  v.  New  York,   11  Fed.  I0  Daniell's     Chancery    Practice, 

Rep.  72,  1882.  1467. 


CHAP.   XX.]  ACTIONS    IN    EQUITY.  443 

§  649.  A  final  decree  will  be  entered  in  favor  of  the  defend- 
ant, where  a  demurrer  to  the  whole  bill  is  sustained  on  a  point 
which  is  not  cured  by  amendment ;  or  where  a  plea  to  the 
whole  bill  is  sustained  on  an  argument,  and  is  thereupon  re- 
plied to,  and  is  found  to  be  true  on  the  trial ;  or  where  either 
of  the  numerous  defences  which  may  be  made  in  an  answer, 
and  which  apply  to  the  whole  bill,  are  established  at  an  inter- 
locutory hearing.  And  final  decrees  will  be  entered  in  favor 
of  complainants,  when  their  bills  have  successfully  run  the 
gauntlet  of  demurrers,  pleas,  answers,  interlocutory  hearings, 
petitions  for  rehearings,  supplemental  bills  in  the  nature  of 
bills  of  review,  accounting  before  a  master,  exceptions  to  the 
master's  report,  and  final  hearings,  througli  which  original 
bills  in  patent  cases  may  regularly  be  caused  to  pass.  The 
last  three  parts  of  this  series  of  proceedings,  are  explained  in 
the  chapter  on  profits,  and  the  others  have  already  been  out- 
lined in  this.  Assuming  therefore,  that  a  final  decree  has 
already  been  entered  for  the  complainant  or  the  defendant,  it 
is  now  convenient  to  delineate  the  further  proceedings  to 
which  the  defeated  party  may  resort.  These  are  of  two 
kinds  :  bills  of  review,  and  appeals. 

§  650.  A  bill  of  review  is  the  proper  means  of  securing  a 
reconsideration  of  a  final  decree  after  the  expiration  of  the 
term  at  which  it  was  entered. '  Such  bills  are  of  two  sorts  :  those 
filed  to  correct  errors  apparent  on  the  face  of  the  pleadings  or 
decree  ; "  and  those  filed  to  introduce  evidence  of  facts  which 
occurred  or  were  discovered  after  the  decree  was  entered.'  In 
order  to  secure  favorable  action  on  such  a  bill,  the  petitioner 
must  first  pay  to  the  opposite  party  the  amount  of  the  decree 
which  he  seeks  to  have  reversed  or  modified,  unless  the  court 
releases  him  from  that  necessity.  But  the  court  will  release 
him  if  he  is  unable  to  pay  ;  *  and  will  probably  do  so  where 


1  Story's  Equity  Pleading,  Section  3  Story's  Equity  Pleading,  Section 

403.  404. 

*  Whiting  v.  The  Bank  of  the  4  Story's  Equity  Pleading,  Section 

United  States,  13  Peters,  14,  1839.  400. 


444  .ACTIONS  m  EQUITY.  [CHAP.  xx. 

the  opposite  party  is  insolvent,  if  the  petitioner  will  give 
good  security  for  the  money  decreed,  or  will  deposit  that 
money  in  court.1 

§  651.  A  bill  of  review,  to  correct  errors  apparent  on  the 
pleadings  or  decree,  may  be  filed  without  leave  of  court,2  but 
no  such  bill  will  be  considered  or  acted  upon  by  the  court,  un- 
less it  is  filed  within  the  same  time  after  the  entry  of  the  de- 
cree, as  that  provided  for  by  statute  relevant  to  appeals  ; ' 
which  latter  space  is  at  present  two  years.4  Is  or  will  such  a 
bill  be  entertained,  if  the  decree  which  it  was  filed  to  correct, 
was  entered  by  the  Circuit  Court,  after  an  appeal  from  the 
Supreme  Court,  and  in  pursuance  of  directions  contained  in 
the  mandate  of  the  latter  tribunal.6  In  considering  a  bill 
of  review  of  this  sort,  the  court  will  confine  its  examination 
to  the  pleadings  and  decree  in  the  original  action,  for  no  bill 
lies  to  correct  any  errors  of  fact  which  were  made  in  examining 
or  weighing  the  evidence  upon  which  the  decree  was  based." 

§  652.  A  bill  of  review,  filed  to  introduce  evidence  of  new 
facts  or  of  newly  discovered  facts,  cannot  be  filed  without 
leave  of  court.7  Where  the  case  sought  to  be  reviewed  has 
not  been  appealed,  the  application  for  leave  is  made  to  the 
court  which  rendered  the  decree,  but  where  the  case  has  been 
appealed  to  the  Supreme  Court  the  application  must  be  pre- 
sented to  that  tribunal.8  If  that  court  decides  that  the  leave 
ought  to  be  granted,  it  will  return  the  case  to  the  court  below, 
with  directions  to  receive  and  adjudicate  the  bill  of  review  ; ' 
and  thereafter  the  case  will  proceed  in  the  lower  tribunal  much 
as  it  would  have  done  if  no  appeal  had  been  taken.  After 
the  bill  of  review  has  been  litigated  and  a  new  decree  entered, 


1  Griggs  v.  Gear,  3  Oilman,  (Illi-  570,  1853. 
nois)  17,  1845.  «  Whiting  v.  Bank  of  the  United 

s  Ross  v.  Prentiss,  4  McLean,  106,  States,  13  Peters,  14,  1839  ;  Story's 

1846  ;  Story's  Equity  Pleading,  Sec-  Equity  Pleading,  Section  407. 
tion  405.  7  Boss  v.  Prentiss,  4  McLean,  106, 

•Thomas   v.    Harvie's   Heirs,    10  1846. 
Wheaton,  149,  1825.  *  Roemer  v.  Simon,  2  Bann  &  Ard. 

4  Revised  Statutes,  Section  1008.  72,  1875. 

6  Southard  v.  Russell,  16  Howard,          *  Revised  Statutes,  Section  701. 


CHAP.  XX.]  ACTIONS   IN    EQUITY:  44:5 

an  appeal  will  lie  to  the  Supreme  Court  on  the  whole  case. 
The  mode  of  application  for  leave  to  file  such  a  bill,  is  by  a 
petition  stating  the  original  proceedings  and  the  new  facts  or 
newly  discovered  facts  on  the  strength  of  which  reversal  of 
the  decree  is  prayed.1  The  petition  must  be  supported  by 
affidavits  stating  the  exact  nature  of  those  facts,  in  order  that 
the  court  may  judge  of  their  materiality  and  sufficiency,  and 
showing  that  they  occurred  after  the  final  decree  was  entered, 
or  if  they  occurred  before  that  time,  that  they  were  not  dis- 
covered, and  could  not  with  reasonable  diligence  have  been 
discovered  till  afterward.8  Bills  of  review  of  this  sort  may 
be  filed  even  more  than  two  years  after  the  entry  of  the  de- 
cree, provided  they  are  filed  within  a  reasonable  time  after  the 
discovery  is  made  upon  which  they  are  based.8  Leave  to  file 
such  a  bill  will  be  granted,  in  a  proper  case,  whether  those 
facts  relate  to  issues  in  the  original  action,  or  relate  to  de- 
fences which  were  not  in  issue  therein  ; 4  but  it  will  not  be 
granted  where  the  facts  stated  in  the  petition  are  not  adapted, 
or  are  not  sufficient,  to  have  altered  the  decree  if  they  had 
been  before  the  court  on  the  hearing,"  nor  where  those  facts 
could,  with  reasonable  diligence,  have  been  discovered  before 
the  decree  was  entered,"  nor  to  enable  the  petitioner  to  intro- 
duce evidence  to  impeach  the  character  of  the  witnesses  upon 
whose  testimony  the  decree  was  based  ;  nor  to  introduce 
cumulative  testimony  on  a  point  litigated  and  decided  at  the 
hearing  ;  but  newly  discovered  corroborating  evidence  in  writ- 
ing may  furnish  a  foundation  for  such  leave.7  After  a  bill  of 
review  to  introduce  new  facts,  or  newly  discovered  facts,  has 
been  duly  filed,  the  opposite  party  may  plead  or  answer  there- 


1  Massie's     Heirs     v.     Graham's  Hemstead's   Circuit  Court  Reports, 

Adm'rs,  3  McLean,  43,  1842.  131,  1833  ;  Story's  Equity  Pleading, 

*  Story's  Equity  Pleading,  Sections  Sections  415  and  416. 

412,  413,  and  414.  5  Dexter  v.  Arnold,  5  Mason,  313, 

*  United      States    v.    Samperyac,  1829. 

Hemstead's  Circuit  Court  Reports,  *  Rubber  Co.   v.  Goodyear,  9  Wal- 

131,  1831.  lace,  806,  1869. 

4  Dexter  v.  Arnold,  5  Mason,  313,  7  Southard  v.  Russell,  16  Howard, 

1829  ;   United  States  v.  Samperyac,  569,  1853. 


446  ACTIONS    IN    EQUITY.  [CHAP.  XX. 

to,  and  thus  put  the  party  who  filed  it,  to  the  proof  of  its  alle- 
gations.1 A  demurrer  to  a  bill  of  this  sort  is  not  appropriate, 
because  its  sufficiency  in  point  of  law  must  be  passed  upon 
before  it  can  be  filed. 

§  653.  A  bill,  in  the  nature  of  a  bill  of  review,  differs  from  a 
bill  of  review  only  in  respect  of  the  legal  character  of  the  com- 
plainant. The  latter  bill  can  be  filed  by  either  of  the  parties 
to  the  decree  which  is  sought  to  be  reviewed,  or  by  their  re- 
spective privies  in  representation,  such  as  heirs,  executors,  or 
administrators  ;  but  the  former  is  required  to  be  filed,  where 
privies  in  estate,  such  as  devisees  or  assignees  of  an  original 
party,  seek  to  secure  the  reversal  or  modification  of  a  final  de- 
cree after  the  expiration  of  the  term  at  which  it  was  entered.* 
Neither  of  these  sorts  of  bills  is  to  be  confounded  with  a  sup- 
plemental bill  in  the  nature  of  a  bill  of  review.  That  is  still 
another  variety,  and  its  character  and  operation  have  already 
been  outlined.3 

§  654.  An  appeal  to  the  Supreme  Court  is  demandable  from 
every  final  decree,  in  cases  touching  patent  rights,  regardless  of 
the  amount  involved  therein,4  provided  it  is  taken  within  two 
years  after  the  entry  of  the  decree.6  But  in  order  to  operate 
as  a  supersedeas,  and  thus  stay  execution,  an  appeal  must  be 
taken  within  sixty  days  after  the  rendition  of  the  decree  ;  and 
indeed  an  execution  may  be  issued,  if  an  appeal  is  not  taken 
within  ten  days  after  such  rendition."  But  in  the  latter 
case,  a  supersedeas  afterward  obtained  will  prevent  further  pro- 
ceedings under  the  execution,  though  it  will  not  intefere  with 
what  has  already  been  done.7  The  time  within  which  appeals 
may  be  taken,  may  properly  be  held  to  begin  either  when  the 
case  is  finally  decided,  or  when  the  formal  decree  is  signed  by 
the  judge,  and  filed  with  the  clerk  of  the  court.8  When  an 

1  Dexter  v.  Arnold,  5  Mason,  309,  1871. 
1829.  6  Revised  Statutes,  Section  1008. 

J  Story's  Equity  Pleading,  Section          •  Revised  Statutes,  Sections  1012, 

409.  and  1007. 

s  Sections  647  and   648    of    this          '  Board  of  Commissioners  v.  Gor- 

book.  man,  19  Wallace  663,  1873. 

4  Revised  Statutes,  Section  699  ;          8  Silsby  v.  Foote,  20  Howard  290, 

Philip   v.    Nock,    13   Wallace,    185,  1857. 


CHAP.   XX.]  ACTIONS    IN    EQUITY.  447 

appeal  operates  as  a  supersedeas,  it  so  operates  only  as  against 
the  money  recovery  provided  for  in  the  decree,  and  not  as 
against  that  part  of  the  decree  which  directs  the  payment  of 
the  master's  fees,1  nor  as  against  that  part  which  directs  an  in- 
junction to  issue  ;  *  but  the  judge  who  enters  a  decree  grant- 
ing an  injunction,  has  discretionary  power  to  suspend  or 
modify  the  same  pending  an  appeal.3 

§  655.  On  the  hearing  of  an  appeal  in  the  Supreme  Court, 
the  decree  may  generally  be  attacked  by  the  appellant,  upon 
any  ground  upon  which  it  was  resisted  in  the  court  below. 
There  are  a  few  exceptions  to  this  rule.  The  decree  cannot 
be  assailed  on  the  ground  that  the  court  below  refused  to  set 
aside  a  decree  pro  confesso,4  or  refused  to  allow  the  appellant 
to  retract  an  admission  which  he  had  made  in  his  pleadings  ;  * 
or  rendered  any  other  decision  which  belonged  to  the  judicial 
discretion  of  the  court  to  make.  Nor  can  a  decree  be  attacked 
in  the  Supreme  Court,  on  account  of  any  error  made  by  a 
master  in  chancery  in  taking  an  account  of  profits  or  damages, 
unless  that  error  was  brought  before  the  court  below  for  cor- 
rection, by  means  of  a  proper  exception  to  the  master's  report.* 
"Where  a  decree  is  reversed  and  remanded  for  further  proceed- 
ings, and  a  second  decree  is  entered  by  the  court  below  after 
those  proceedings  are  taken,  and  an  appeal  is  taken  from  the 
second  decree,  that  decree  cannot  be  assailed  on  account  of 
any  errors  that  occurred  prior  to  the  former  decree.7  No  de- 
cree can  be  attacked  by  the  appellee,  on  the  appellant's  ap- 
peal. Where  either  party  to  a  decree  intends  to  ask  the 
Supreme  Court  to  direct  it  to  be  altered,  he  must  appeal  to 
that  tribunal,  whether  the  other  party  appeals  or  not.8  "Where 

1  Myers  v.  Dunbar,  1  Bann.  &  Ard.  ard,  289,  1855. 

565,  1874.  '  Himely  v.  Hose,  5  Cranch,  313, 

8  Whitney    v.    Mowry,    3  Fisher,  1809  ;  The  Santa  Maria,  10  Wheaton, 

175,  1867.  431,  1825  ;  American  Insurance  Co. 

«  Equity  Kule  93.  v.  Canter,  1  Peters  511,  1828  ;  Corn- 

4  Dean  v.  Mason,  20  Howard,  198,  ing  v.  Troy  Iron  &  Nail  Factory,  15 
1857.  Howard,  451,  1853. 

5  Jones    v.  Morehead,  1  Wallace,  8  Corning   v.  Troy    Iron    &    Nail 
155, 18G3.  Factory,  15  Howard,  451,  1853. 

6  Kinsman  v.  Parkhurst,  18  How- 


4AS  ACTIONS   IN    EQUITY.  [CHAP.  XX. 

both  parties  appeal,  both  appeals  are  heard  together  in  the 
Supreme  Court,  and  the  complainant  in  the  court  below  is  en- 
titled to  open  and  to  close  the  argument.1  A  decree  may  also 
be  attacked  by  an  appellant,  on  several  grounds  upon  which  it 
may  not  have  been  resisted  in  the  court  below.  Non-jurisdic- 
tion of  equity  falls  in  this  category  ; *  and  so  does  want  of  in- 
vention, when  that  want  results  from  facts  of  which  the  court 
will  take  judicial  notice.3  Where  a  defendant  interposed 
several  defences  in  the  court  below,  and  where  that  court  held 
them  all  to  be  bad,  except  one  which  it  held  to  be  good,  and 
therefore  dismissed  the  bill  ;  and  where  the  Supreme  Court 
on  an  appeal,  finds  the  latter  defence  to  be  bad,  it  will  there- 
upon decide  whether  either  of  the  others  are  good,  and  if  it 
finds  either  of  them  to  be  so,  it  will  affirm  the  decree.4 

§  656.  After  the  Supreme  Court  has  heard  an  appeal,  it 
may  affirm  the  decree,  or  may  reverse  it,  or  may  modify  it, 
or  may  remand  the  case  to  the  court  below  for  further  pro- 
ceedings.6 Where  it  affirms  the  decree,  it  ends  the  litigation, 
leaving  the  court  below  to  enforce  its  adjudication,  if  any  en- 
forcement is  required.  Where  it  reverses  the  decree,  it 
generally  does  so  at  the  appellee's  costs,  so  that  the  court 
below,  when  it  receives  the  mandate,  will  have  nothing  to  do 
but  to  tax  those  costs,  and  enter  a  decree  therefor  ;  and  from 
such  a  decree  there  is  no  appeal.6  When  it  modifies  the  de- 
cree, it  may  do  so  in  either  of  several  respects.  For  example, 
it  may  change  a  decree  which  was  entered  for  the  appellant 
with  costs,  to  one  without  costs,  and  in  that  event  it  will  re- 
quire the  appellee  to  pay  his  own  costs  in  the  Supreme 
Court.7  It  may  also  change  the  amount  of  the  decree, 
instead  of  remanding  the  case  to  the  court  below  for  a  recom- 
putation.'  Where  it  remands  a  case  for  further  proceedings, 

1  Rules  of  the  Supreme  Court  of  6  Revised  Statutes,  Section  701. 

the  United  States,  Rule  22.  •  Elastic  Fabrics  Co.  v.  Smith,  100 

*  Hipp  v.  Babin,  19  Howard,  271,  U.  S.  Ill,  18'79. 

1856.  '  O'Reilly   v.    Morse,  15   Howard 

3  Brown    v.    Piper,  91  U.  S.   41,  121,  1853. 

1875.  •  Parks  v.  Booth,  102  U.    S.  106, 

4  Troy    Iron    &    Nail    Factory  v.       1880. 
Corning,  15  Howard  451,  1853. 


CHAP.  XX.]  ACTIONS   IN    EQUITY.  449 

the  proceedings  prescribed  may  even  extend  to  a  trial  at  law, 
or  by  a  jury  in  equity,  of  the  questions  of  fact  involved  in  the 
case.1 

§  657.  A  certificate  of  division  of  opinion,  is  a  means  of 
taking  questions  of  law  to  the  Supreme  Court,  where  those 
questions  arise  in  a  case  heard  by  two  judges  in  the  court  be- 
low, and  where  those  judges  disagree  about  their  proper  solu- 
tion." No  question  of  infringement  or  other  question  of  fact 
can  be  taken  to  the  Supreme  Court  in  this  method  ;  and  such 
a  certificate  must  state  the  precise  points  of  law  which  are  in- 
volved, or  the  case  will  be  remanded  without  an  answer.8 

1  Cochrane  v.  Deener,  94  U.  S.  784,  3  Wilson    v.  Barnum,  8   Howard, 

1876.  258,  1850. 

*  Revised  Statutes,  Section  693. 


CHAPTER  XXI. 

INJUNCTIONS. 


658.  Jurisdiction  to    graat  injunc- 
tions. 

659.  Preliminary  injunctions. 

660.  Bills  for  preliminary    injunc- 
tions. 

661.  Notices  of  motions  for  prelimi- 
nary injunctions. 

662.  Motions    for    preliminary    in- 
junctions. 

663.  Suspensions    of    motions    for 
preliminary  injunctions. 

664.  Temporary  restraining  orders. 

665.  Elements  of  prima  facie  rights 
to  preliminary  injunctions. 

666.  Prior  adjudication. 

667.  Public  acquiescence. 

668.  Duration  of  public  acquiescence 
in  a  strict  monopoly. 

669.  Durationof  public  acquiescence 
in  a  licensed  monopoly. 

670.  Public  acquiescence  need  not 
be  universal  to  be  efficacious. 

671.  Decrees  pro  confesso. 

672.  Consent  decrees. 

673.  Defendent's  admission  of  va- 
lidity. 

674.  Interference  decisions. 

675.  The  complainant's  title. 

676.  Infringement. 

677.  Defences  to  motions  for  pre- 
liminary injunctions  ;  and  first 
by  way  of  traverse. 

678.  Defences  by  way  of  confession 
and  avoidance. 

679.  Averting  effect  of  prior  adjudi- 
cation. 


680.  Averting  effect  of  public    ac- 
quiescence. 

681.  Averting    preliminary    injunc- 
tion  by   proving   repeal  or  ex- 
piration of  patent,  or  fault  in 
title  thereto. 

682.  Averting    preliminary    injunc- 
tion by  proving  license. 

683.  By  proving  estoppel. 

684.  By  showing  laches. 

685.  Preliminary    injunction    must 
generally  follow  a  cause  and  an. 
application  therefor. 

686.  Bonds  instead  of  injunctions, 
where    complainant    grants  li- 
censes. 

687.  Where     infringing   machinery 
embodies   non-infringing    feat- 
ures,  also  where  it  was    con- 
structed under  a  junior  patent. 

688.  Bonds  required  from  complain- 
ants in  certain  cases. 

689.  Injunctions  not  averted  by  the 
existence  of  a  remedy  at  law. 

690.  Injunctions   pro    confesso    on 
withdrawal   of   opposition  to  a 
motion  for  an  injunction. 

691.  Discretion    of     the    court    in 
granting    or     refusing    injunc- 
tions. 

692.  Motions  to  dissolve  preliminary 
injunctions. 

693.  Motions  to  dissolve  for  errors 
in  point  of  law. 

694.  Motions  to  dissolve  on  account 
of  newly  discovered  evidence. 


CHAP.  XXI.] 


INJUNCTIONS. 


451 


695.  Reinstatement  of  dissolved  in- 
junctions. 

696.  Consequences  of  obedience  or 
disobedience     to      injunctions 
•which    are    subsequently    dis- 
solved. 

C97.  Permanent  injunctions. 

698.  Refusal  of  permanent  injunc- 
tion, because  the  patent  has  ex- 
pired. 

699.  Because   the  complainant  has 
assigned  the  patent. 

700.  Because  the  defendant  is  dead, 
or.  if  a  corporation,  is  dissolved. 

701.  Cessation   of  infringement   no 
ground  for  refusal  to  enjoin. 

702.  Postponement    of    permanent 
injunctions. 

703.  Suspension  of   permanent  in- 
junctions. 


704.  Dissolution  of  permanent  in- 
junctions. 

705.  Injunctions  granted  independ- 
ent of  other  relief ;  but  no  in- 
junctions issued  in  trivial  cases, 
nor    to   restrain    complainants 
from  suing  third  parties. 

706.  The  duration    of    injunctions 
generally  limited  by  the  term  of 
the  patent. 

707.  The   duration    of    injunctions 
granted    by  district  judges  in 
vacation. 

708.  Attachments  for  contempts. 

709.  Improper  defences  to  motions 
for  attachments. 

710.  Penalties  for  violations  of  in- 
junctions. 


§  658.  JURISDICTION  to  grant  injunctions  to  prevent  the 
violation  of  patent  rights,  is  conferred  by  statute  upon  the 
same  courts  that  are  vested  with  common-law  jurisdiction  in 
patent  cases.1  The  statute  provides  that  the  jurisdiction  shall 
be  exercised  according  to  the  course  and  principles  of  courts  of 
equity,  and  upon  such  terms  as  the  court  may  deem  reason- 
able. This  twofold  provision  indicates  the  sources  from 
which  the  existing  rules  applicable  to  such  cases  were  drawn. 
They  were  drawn  from  the  ordinary  course  and  principles  of 
courts  of  equity,  and  from  a  reasonable  contemplation  of  the 
peculiar  circumstances  which  attend  patent  rights  and  patent 
litigation.  Some  of  those  rules  relate  only  to  preliminary  in- 
junctions, and  others  relate  to  permanent  injunctions  alone  ; 
and  the  residue  are  equally  applicable  to  both.  It  is  the  plan 
of  this  chapter  to  explain  those  three  classes  of  rules,  and 
to  show  how  all  of  them  combined  make  up  a  system  which 
may  guide  the  judicial  discretion  in  nearly  every  variety  of 
circumstances. 

§  659.  A  preliminary  injunction  is  one  which  is  granted 
after  the  filing  of  the  bill,  and  before  the  case  is  ready  for  an 

1  Bevised  Statutes,  Section  4921. 


452  INJUNCTIONS.  [CHAP.  xxi. 

interlocutory  hearing.  When  granted,  it  is  commonly  granted 
before  the  tiling  of  the  answer ;  but  it  is  sometimes  issued 
after  that  stage  of  the  case,  and  sometimes  even  after  the  com- 
plainant has  introduced  all  his  prima facie  evidence.1  Such 
an  injunction  may  be  dissolved  at  any  time,  and  a  motion  to 
dissolve  it  may  be  made  whenever  an  apparent  cause  for  its 
dissolution  becomes  known  to  the  party  enjoined.  If  not 
sooner  terminated  by  dissolution,  or  by  a  certain  statutory  limi- 
tation hereafter  explained,  such  an  injunction  continues  till 
the  interlocutory  decree  ;  and  then  it  is  dissolved  or  is  made 
permanent  according  to  the  equities  of  the  case  as  they  appear 
on  the  interlocutory  hearing. 

§  660.  A  bill  of  complaint,  in  order  to  lay  a  foundation  for 
a  preliminary  injunction,  must  state  the  particular  prior  adjudi- 
cation or  acquiescence  upon  which  the  presumption  of  validity 
of  the  patent  is  based,5  and  must  contain  a  specific  prayer  for 
that  relief,  and  for  the  proper  writ  by  means  of  which  that 
relief  may  be  enforced,3  and  must  conform  to  those  requisites 
of  bills  in  equity  which  are  set  forth  in  the  twentieth  chapter 
of  this  book. 

§  661.  Due  notice  of  a  motion  for  a  preliminary  injunction 
must  be  served  on  the  party  sought  to  be  enjoined  from  in- 
fringing a  patent,  before  that  motion  will  be  heard  by  the 
court.  This  rule  formerly  had  a  sufficient  foundation  in  a 
statute  of  1793,  which  provided  that  no  writ  of  injunction 
should  be  granted  in  any  case  without  reasonable  previous 
notice  to  the  adverse  party,  or  his  attorney,  of  the  time  and 
place  of  moving  for  the  same.4  Portions  of  the  section  which 
contained  that  provision  are  embraced  in  the  Revised  Statutes,* 
but  that  provision  was  omitted  from  those  statutes  and  was 
thereby  repealed.'  But  there  is  still  a  foundation  for  the 

1  Union  Paper  Bag  Machine  Co.  v.  460,  1849. 
Newell,  11  Blatch.  550,  1874.  4  1  Statutes  at  Large,  Ch.  22,  Sec- 

8  Parker  v.  Brant,    1  Fisher,   59,  tion  5,  p.  334. 
1850.  *  Revised    Statutes,   Sections  716 

3  Lewistoii  Falls  Mfg.  Co.  v.  Frank-  and  720. 

lin  Co.,  54  Maine,  402,  1867  ;  Union          •  Revised  Statutes,  Section  5596. 
Bank  v.  Kerr,  2  Maryland  Chancery, 


CHAP.   XXI.]  INJUNCTIONS.  453 

rule  which  is  stated  at  the  head  of  this  section  :  a  foundation 
not  so  direct,  but  quite  as  certain,  as  the  other  was  while  it 
existed.  The  Revised  Statutes  provide  that  the  Supreme 
Court  shall  have  power  to  prescribe  from  time  to  time,  and  in 
any  manner  not  inconsistent  with  any  law  of  the  United  States, 
the  modes  of  proceeding  to  obtain  relief  in  suits  in  equity  in 
the  circuit  and  district  courts.1  In  pursuance  of  this  authority 
the  Supreme  Court  has  prescribed  an  elaborate  code  of  rules  of 
practice  for  the  courts  of  equity  of  the  United  States.  Rule 
55  of  that  series  provides  that  special  injunctions  shall  be  grant- 
able  only  upon  due  notice  to  the  other  party.  And  it  is  cer- 
tain that  all  injunctions  to  restrain  infringements  of  patents 
are  special  as  distinguished  from  common  injunctions.8  A 
different  line  of  argument  on  this  subject,  and  one  followed 
by  a  contrary  conclusion,  is  to  be  found  in  one  reported  case," 
but  the  reasoning  of  that  case  does  not  appear  to  be  con- 
vincing. 

§  662.  A  motion  for  a  preliminary  injunction  is  heard  in  a 
summary  way  on  ex-parte  affidavits.4  The  complainant's 
affidavits  in  chief  must  show  all  the  facts  which  are  necessary 
to  prima  facie  entitle  him  to  such  an  injunction.6  The 
defendant's  affidavits  must  state  all  the  facts  upon  which  he 
bases  his  defence  to  the  motion,  and  if  those  statements  are  by 
way  of  traverse,  no  further  affidavits  are  admitted  on  the  hear- 
ing ;  but  if  they  are  by  way  of  confession  and  avoidance,  the 
complainant  is  permitted  to  read  affidavits  in  reply,  but  to  that 
reply,  no  rejoinder  from  the  defendant  is  ever  allowed.8  All 
the  affidavits  may  be  made  by  the  parties,  or  by  any  other  per- 
sons ;  but  in  either  case  they  must  state  the  facts  positively, 
and  not  on  information  and  belief,  except  upon  the  point  that 

1  Revised  Statutes,   Section    917  ;  4  Grover  &  Baker  Sewing  Machine 

Orr    v.   Littlefield,    1   Woodbury  &  Co.  v.  Williams,  2  Fisher,  133,  1860. 

Minot,  19,  1845.  6  Union  Paper  Bag  Machine   Co. 

8  High  on  Injunctions,  Section  6  ;  v.  Binney,  5  Fisher,  167,  1871. 

Purnell  v.  Daniel,  8  Iredell's  Equity  6  Day  v.  Car-Spring  Co.,  3  Blatch. 

Reports   (N.  C.),  11,  1851.  154,  1854  ;  Rogers  v.  Abbot,  4  Wash- 

3  Yuengling  v.  Johnson,  1  Hughes,  ington,  514,  1825. 
607,  1877. 


454:  INJUNCTIONS.  [CHAP.   XXI. 

the  complainant  believes  the  person  upon  whose  application 
the  patent  was  granted,  to  have  been  the  first  inventor  of  the 
invention  for  which  it  was  issued.1 

The  complainant's  bill  may  be  used  as  an  affidavit,"  and  so 
also  may  the  defendant's  answer,  if  it  is  on  file  when  the 
motion  for  a  preliminary  injunction  is  heard."  But  answers 
are  commonly  and  properly  drawn  in  such  general  terms  that 
they  are  often  of  minor  importance  as  defences  to  such  motions, 
even  where  they  are  well  concerted  as  pleadings.  For  ex- 
ample, where  the  answer  says,  on  the  question  of  infringe- 
ment, that  the  defendant  never  made,  used,  or  sold  any  speci- 
men of  the  patented  thing  ;  and  where  the  affidavits  of  the 
complainant  contain  a  description  of  what  the  defendant  has 
done  and  contain  proper  expert  testimony  showing  that  those 
doings  constitute  infringement  of  the  patent  ;  the  general 
denial  of  the  answer  will  go  for  nought  on  the  hearing  of 
a  preliminary  injunction.4  The  statements  of  the  complain- 
ant's affidavits  in  chief  are  taken  on  the  hearing  to  be  true,  so 
far  as  they  are  uncontradicted  by  the  affidavits  of  the  defend- 
ant ; 6  and  the  affidavits  of  the  defendant  are  taken  to  be  true 
so  far  as  they  are  consistent  with  the  complainant's  affidavits  in 
chief,  and  are  not  contradicted  by  his  affidavits  in  reply.8 

All  affidavits  to  be  used  to  support  or  to  oppose  a  motion 
for  a  preliminary  injunction,  ought  to  be  served  on  the  oppo- 
site counsel  a  reasonable  time  before  the  motion  is  argued. 
Where  that  is  not  done,  the  court  may  reject  the  affidavits,  or, 
at  its  discretion,  may  allow  them  to  be  read,  giving  the  oppo- 
site party  the  option  to  proceed  with  the  hearing,  or  to  take 
time  to  examine  the  affidavits,  and  where  they  admit  of  reply, 
to  take  other  affidavits  for  that  purpose.7 

§  663.  Where,  on  the  hearing  of  a  motion  for  a  preliminary 

1  Young  v.  Lippman,  9  Blatch.  277,  1860. 

1872.  o  Wells  v.  Gill,  6  Fisher,  89,  1879. 

s  Young  y.  Lippman,  9  Blatch.  277,  •  Cooper  v.  Mattheys,  3  Penn.  Law 

1872.  Journal  Reports,  40,  1842. 

3  Parker    v.  Brant,  1    Fisher,  58,  7  Sterrick  v.  Pugsley,  1  Central  Law 
1850.  Journal,  106,  1874. 

4  Ely  v.  Mfg.    Co.,  4  Fisher,   64, 


CHAP.  XXI.]  INJUNCTIONS.  455 

injunction,  the  complainant's  moving  papers  are  found  to  lack 
a  necessary  point  which  is  presumably  capable  of  being  sup- 
plied, the  court  may  suspend  the  motion  to  enable  the  com- 
plainant to  supply  it.1  Such  a  lack  and  consequent  suspension 
are  not  injurious  to  a  defendant,  because  they  merely  operate 
to  postpone  that  which  he  desires  to  be  postponed  as  long  as 
possible.  No  similar  rule  can,  however,  be  invoked  in  favor 
of  a  defendant  who  has  had  reasonable  notice  of  the  motion, 
for  if  he  could  invoke  such  a  rule,  he  could  delay  justice  by 
his  own  neglect. 

If  a  demurrer  is  on  file  in  the  case,  when  a  motion  for  a  pre- 
liminary injunction  comes  on  to  be  heard,  the  demurrer  will 
be  first  heard  and  disposed  of,  even  though  that  proceeding 
necessitates  a  postponement  of  the  hearing  of  the  motion.  But 
if  the  demurrer  is  overruled,  the  defendant,  in  order  to  secure 
leave  to  contest  the  motion  further,  must  file  an  affidavit  that 
the  demurrer  was  not  filed  for  the  purpose  of  delay,  and 
must  give  security  to  pay  the  complainant  the  amount  of  any 
money  decree  to  which  the  delay  consequent  upon  the  demurrer 
may  afterward  be  found  to  entitle  him." 

§  664.  A  temporary  restraining  order  may  be  made  by  the 
court,  where  there  appears  to  be  danger  of  irreparable  injury 
from  delay,  whenever  notice  is  given  of  a  motion  for  a  prelim- 
inary injunction  ;  and  such  an  order  may  be  granted  with  or 
without  security,  in  the  discretion  of  the  court,  or  judge,  and 
will  continue  in  force  till  the  motion  is  decided.3  The  object 
of  this  provision  appears  to  be  to  give  the  judge  time  to  con- 
sider whether  to  grant  a  preliminary  injunction,  instead  .of 
deciding  the  question  immediately  upon  the  close  of  the  argu- 
ment of  a  motion  for  such  a  writ.  It  does  not  appear  to  war- 
rant a  restraining  order  before  notice  is  actually  served  upon 
the  defendant,  nor  indeed  before  the  motion  has  been  heard 
by  the  court,  though  the  last  member  of  this  statement  is  less 
clearly  true  than  the  first.  Even  the  first  has  been  denied  by 

1  Hodge  v.  Railroad  Co..  6  Blatch.       bury  &  Minot;  131,  1847. 
85,  1868.  3  Revised  Statutes,  Section  718. 

1  Woodwortb  v.  Edwards,  3  Wood- 


456  INJUNCTIONS.  [CHAP.  xxi. 

one  district  judge  ;  but  in  order  to  deny  it,  he  had  to  hold  that 
a  notice  is  "given"  when  a  rule  to  show  cause  against  a 
motion  is  entered  in  court.1  But  the  statute  does  not  provide 
for  any  rule  to  show  cause.  It  provides  for  a  notice  which  is 
given  ;  and  no  notice  can  be  said  to  be  given  until  it  is  served. 
§  665.  In  deciding  whether  a  given  complainant  has  made 
out  a prima  facie  case  for  a  preliminary  injunction  to  restrain 
infringement  of  a  patent,  the  judge  is  guided  by  the  presence 
or  absence  of  two  presumptions  and  one  certainty.  Those  pre- 
sumptions relate  to  the  validity  of  the  patent  and  to  the  de- 
fendant's infringement  thereof,  and  that  certainty  relates  to 
the  complainant's  title  thereto.  If  that  certainty  or  either 
of  those  presumptions  are  absent  in  a  given  case,  no  pre- 
liminary injunction  will  be  granted  ;  but  such  a  writ  will  be 
granted  where  they  are  all  present,  unless  the  defendant  inter- 
poses some  good  defence  to  the  motion,  or  unless  the  court 
takes  a  bond  from  the  defendant  instead  of  subjecting  him  to 
an  injunction.  A  special  presumption  that  the  patent  is  valid 
lies  at  the  foundation  of  a  patentee's  right  to  a  preliminary 
injunction.  That  presumption  does  not  arise  out  of  the  unat- 
tended letters  patent,  but  will  always  exist  where  the  patent 
has  been  suitably  adjudicated  in  a  Federal  court,  and  there 
held  to  be  valid  ; s  or  where  the  validity  of  the  patent  has 
been  suitably  acquiesced  in  by  the  public  ;  *  or  where  the 


1  Yuengling  v.  Johnson,  1  Hughes,  386,    1868  ;    Goodyear   Dental  Vul- 

607,  1877.  canite  Co.  v.   Evans,  3  Fisher,  390, 

*  Orr  v.  Littlefield,  1  Woodbury  &  1868  ;  Goodyear  v.  Berry,  3  Fisher, 

Minot,  13, 1845  ;  Woodworth  v.  Hall,  439,    1868  ;    Goodyear    v.    Rust,    3 

1  Woodbury  &  Minot,    248,    1846  ;  Fisher,   456,   1868  ;   Atlantic  Giant 

Woodworth  v.  Edwards,  3  Woodbury  Powder  Co.  v.  Goodyear,  3  Bann.  & 

&  Minot,  120,  1847  ;  Gibson  v.  Van  Ard.  167,  1877 ;  Green  v.  French,  4 

Dresar,  1  Blatch.  532,   1850  ;  Potter  Bann.  &  Ard.  169,  1879  ;  Kirby  Bung 

v.  Holland,  4  Blatch.  238, 1858  ;  Par-  Mfg.  Co.  v.  White,  5  Bann.  &  Ard. 

ker  v.  Brant,  1  Fisher,  58, 1850  ;  Pot-  263,  1880. 

ter  v.  Fuller,   2  Fisher,   251,   1862  ;  3  Goodyear    v.    Railroad    Co.,     1 

Grover  &  Baker  Sewing  Machine  Co.  Fisher,    626,    1853  ;  American   Mid- 

v.   "Williams,   2   Fisher,    134,    1860  ;  dlings  Purifier  Co.    v.    Christian,  3 

Potter    v.   Whitney,   3  Fisher,    77,  Bann.  &  Ard.  48,  1877. 
1866  ;  Conover   v.  Mers,   3   Fisher, 


CHAP.   XXI.]  INJUNCTIONS.  457 

defendant  at  bar  has  allowed  a  decree  pro  confesso  to  be  taken 
against  him  ; '  or  where  the  defendant  does  not  deny  the 
validity  of  the  patent  ;  *  and  that  presumption  will  sometimes 
exist  where  the  patent  has  successfully  undergone  an  inter- 
ference in  the  Patent  Office.* 

§  666.  An  adjudication  in  another  case,  in  order  to  furnish 
a  suitable  foundation  for  a  right  to  a  preliminary  injunction, 
must  have  resulted  in  favor  of  the  patent  in  a  regular  hearing 
in  equity,  or  on  the  trial  of  an  action  at  law.4  Of  these,  the 
former  raises  the  stronger  presumption,6  but  most  of  the 
considerations  which  apply  to  it,  apply  also  to  the  latter.  An 
interlocutory  decree  in  another  case,  is  as  good  a  foundation 
for  a  right  to  an  injunction  as  a  final  decree  would  be  ; "  be- 
cause an  interlocutory  decree  settles  all  pending  questions  of 
validity,  and  a  final  decree  merely  reiterates  its  conclusions  on 
that  point.  An  adjudication  of  a  prior  suit  based  on  the  first 
term  of  a  patent,  may  be  made  the  foundation  of  a  right  to  a 
preliminary  injunction  to  restrain  infringement  of  the  ex- 
tended term  of  the  same  patent.7  But  no  adjudication  of  a 
suit  based  on  an  original  patent  can  be  invoked  as  a  basis  for 
a  preliminary  injunction  to  restrain  infringement  of  any  new 
claim  contained  in  a  reissue  thereof.8  The  difference  be- 
tween a  prior  decree  in  equity  and  a  prior  verdict  at  law  as 
foundations  for  an  injunction,  seems  to  be  this.  A  decree 
cannot  be  ignored  on  any  ground  which  merely  tends 
to  show  that  the  judge  who  rendered  it  misunderstood  or  mis- 
weighed  the  evidence  upon  which  it  was  based  ;  while  a  ver- 
dict of  a  jury  may  be  disregarded  if  the  judge  who  is  invited 


1  Schneider    v.    Bassett,    13    Fed.  1865. 

Eep.  351,  1882.  s  Goodyear  v.   Mullee,   3  Fisher, 

•  Sickels    v.   Mitchell,    3    Blatch.  420,  1868. 

548,   1857  ;  New  York   Grape   Sugar  6  Potter  v.  Fuller,  2  Fisher,  251, 

Co.  v.  American  Grape  Sugar  Co.,  10  1862. 

Fed.  Rep.  835,  1882.  '  Clum   v.  Brewer,  2   Curtis,    507, 

3  Pentlarge  v.  Beeston,  14  Blatch.  1855  ;  Tilghman  v.  Mitchell,  4  Fish- 
354,   1877  ;  Smith   v.    Halkyard,    16  er,  615,  1871. 

Fed.  Rep.  414,  1883.  8  Poppenhusen  v.  Falke,  2  Fisher, 

4  Doughty  v.  West,  2  Fisher,  559,  181,  1861. 


458  INJUNCTIONS.  [CHAP.  xxi. 

to  base  a  preliminary  injunction  upon  it,  is  of  opinion  that  it 
was  not  justified  by  the  facts.1 

§  667.  Public  acquiescence,  sufficient  to  create  a  presumption 
of  validity,  and  therefore  sufficient  to  furnish  a  foundation  for 
a  right  to  a  preliminary  injunction,  may  arise  out  of  either  of 
two  classes  of  facts.  It  may  arise  where  the  patentees  made 
and  sold  specimens  of  the  patented  article  for  many  years, 
during  which  no  other  person  assumed  to  make  any  such  speci- 
mens ; a  or  it  may  arise  where  the  patentee  long  licensed 
others  to  make,  use,  or  sell  such  specimens,  while  nobody 
assumed  to  do  either  without  such  a  license  from  him,  and  the 
acquiescence  is  quite  as  positive  in  this  case  as  in  the  other. 

§  668.  The  length  of  time  necessary  to  make  exclusive  pos- 
session, of  the  first  sort,  available  in  a  motion  for  a  preliminary 
injunction,  depends  upon  the  nature  of  the  invention,  and  to 
the  extent  to  which  a  good  invention  of  the  sort  would  natu- 
rally be  used  if  it  were  free  to  the  public  ;  and  upon  the  popu- 
larity of  that  particular  invention  with  that  part  of  the  public 
likely  to  want  an  article  of  the  kind.3  Where  nobody  but 
the  patentee  had  any  use  for  the  article  during  the  time  of  the 
alleged  acquiescence,  or  where  its  merits  were  prized  so  low 
that  nobody  else  cared  to  adopt  it ;  no  lapse  of  time  has  any 
tendency  to  raise  a  presumption  that  the  patent  is  valid.  Ac- 
quiescence in  claims  which  nobody  cared  to  dispute  when  the 
acquiescence  occurred,  has  no  tendency  to  show  that  those 
claims  are  valid.  But  where  all  persons,  other  than  the  owner 
of  the  patent,  refrain  from  making,  using,  or  selling  speci- 
mens of  the  patented  article  merely  because  it  is  patented,  and 
notwithstanding  it  would  otherwise  be  for  their  interest  to 
adopt  it  ;  their  acquiescence  shows  their  conviction  that  the 
patent  is  valid  :  a  conviction  presumably  based  on  inquiry, 
because  persons  are  not  likely  to  acquiesce  in  adverse  rights 
without  any  investigation  of  their  soundness.4  In  a  case  of 

1  Sickels  v.  Young.  3  Blatch.  297,          3  Doughty  v.  West,  2  Fisher,  559, 
1855  ;  Day  v.  Hartshorn,  3  Fisher,       1865. 

32,  1855.  *  Grover  &  Baker  Sewing  Machine 

2  Sargent  v.   Seagrave,   2    Curtis,       Co.  v.  Williams,  2  Fisher,  134,  1860. 
657,  1855. 


CHAP.   XXI.]  INJUNCTIONS.  459 

the  latter  sort,  any  acquiescence  which  is  shown  by  lapse  of 
time  to  be  general  and  to  be  genuine,  will  be  sufficient  to 
sustain  a  preliminary  injunction.1  Two  years  have  been 
found  to  be  ample  in  a  case  where  the  patentee  made  and 
sold  105,000  specimens  of  his  patented  apple-paring  machine 
during  that  time,2  and  in  another  case,  eight  years,  in  which 
the  patentee  made  and  sold  150  specimens  of  his  patented 
machine  for  cutting  leather  for  shoe  soles,  were  held  to  be 
sufficient.3 

§  669.  The  length  of  time  necessary  to  make  exclusive  pos- 
session, of  the  second  sort,  available  on  a  motion  for  a  prelimi- 
nary injunction  will  depend  largely  upon  whether  the  licenses 
granted  were  granted  in  consideration  of  the  payment  of  sub- 
stantial royalties,  or  for  such  an  insignificant  price  as  indicates 
that  they  were  issued  for  the  sole  purpose  of  raising  a  pre- 
sumption of  public  acquiescence.  In  the  former  case,  it  is 
safe  to  assume  that  sales  of  licenses  will  be  quite  as  rapidly 
efficacious  in  the  desired  direction,  as  sales  of  specimens  of 
the  patented  invention  ; 4  while  in  the  latter  case,  a  long  and 
genuine  payment  of  royalties  will  be  necessary  to  give  the 
licenses  any  importance  in  respect  of  preliminary  injunctions 
against  third  parties. 

§  670.  Public  acquiescence  is  strengthened  rather  than 
weakened,  as  a  foundation  to  a  right  to  a  preliminary  injunc- 
tion, by  the  fact  that  some  persons  for  a  while  refused  to  join 
in  it,  but  on  receiving  further  information,  submitted  to  the 
exclusive  right  claimed  by  the  patentee.  Such  a  submission  is 
generally  the  most  persuasive  degree  of  acquiescence.5  Nor  is 
universal  acquiescence  necessary  to  be  shown  as  existing  at  the 
time  of  the  motion  ;  for  if  it  were  necessary  and  were  shown, 
it  would  prove  that  the  defendant  himself  is  not  infringing  the 
patent,  and  thus  negative  that  part  of  the  foundation  of  the 


1  Orr  v.  Littlefield,  1  Woodbury  &  1852. 
Minot,  17,  1845.  4  Grover  &  Baker  Sewing  Machine 

J  Sargent    v.   Seagrave,   2  Curtis,  Co.  v.  Williams,  2  Fisher,  138, 1860. 
557,  1855.  6  Sargent    v.    Seagrave,    2  Curtis,  , 

8  Foster  v.  Moore,  1  Curtis,  279,  556,  1855. 


4CO  INJUNCTIONS.  [CHAP.   XXI. 

case.1  But  a  preliminary  injunction  will  not  be  granted  on 
any  basis  of  acquiescence  where  the  defendant  has  been  long 
in  possession  and  use  of  the  invention,  adverse  to  the  claim  of 
the  complainant,  and  under  a  claim  and  color  of  right.8  No 
acquiescence  in  an  original  patent  can  be  made  the  basis  of  a 
right  to  a  preliminary  injunction  to  restrain  infringement  of 
any  claim  in  a  reissue  of  that  patent,  unless  that  claim  was 
also  contained  in  the  original.* 

§  671.  A  decree  pro  confesso  entered  in  a  case,  raises  a  suffi- 
cient presumption  of  the  validity  of  the  patent,  to  support  a 
right  to  a  preliminary  injunction  in  that  case  ; 4  but  there  is 
no  ground  for  giving  such  a  decree  such  an  operation  in  any 
case  against  another  defendant.6 

§  672.  A  consent  decree  is  one  which  is  entered  by  the  con- 
sent of  the  defendant,  at  some  stage  of  the  case  after  the  filing 
of  the  answer,  and  before  the  judge  has  decided  the  case  on 
its  merits.  In  some  branches  of  jurisprudence,  such  a  decree 
may  raise  as  strong  a  presumption  of  the  validity  of  the  com- 
plainant's case,  as  could  be  raised  by  a  decree  based  on  a  deci- 
sion of  the  court.  That  may  be  the  fact  where  the  nature  of 
the  case  shows  that  it  would  have  been  distinctly  more  advan- 
tageous for  the  defendant  to  win  the  suit  than  to  be  defeated. 
But  in  patent  cases,  it  would  often  be  pecuniarily  better  for 
the  defendant  to  consent  to  a  decree  against  him,  than  to  win 
the  suit,  if  by  doing  the  former  he  could  enable  the  complain- 
ant to  secure  preliminary  injunctions  against  third  parties.  If 
he  wins,  he  secures  a  right  to  continue  his  doings,  but  he  also 
practically  secures  the  same  right  for  other  persons,  and  thus 
throws  the  business  open  to  general  competition.  If  by  con- 
senting to  a  decree  against  himself,  a  defendant  could  secure  a 
license  on  favorable  terms,  and  could  enable  the  complainant 
to  prevent  all  competition  by  means  of  preliminary  injunc- 
tions, it  would  frequently  happen  that  the  defendant's  net  prof- 

1  McComb    v.   Ernest,    1   Woods,  Co.  v.  Williams,  2  Fisher,  144,  1860. 

206,  1871.  4  Schneider    v.   Bassett,    13   Fed. 

*  Isaacs  v.  Cooper,  4  Washington,  Rep.  351,  1882. 

259,  1821.  •  Everett  v.  Thatcher,  3   Bann.  4 

8  Grover  &  Baker  Sewing  Machine  Ard.  437,  1878. 


CHAP.  XXI.]  INJUNCTIONS.  461 

its  would  be  larger  than  they  would  have  been  if  he  had  won 
the  suit.  To  win  the  suit  would  often  operate  to  reduce  prices 
and  profits,  to  an  amount  in  excess  of  the  aggregate  of  the 
decree  to  which  he  might  consent  and  the  royalties  he  might 
promise  to  pay.  In  such  a  case  a  defendant  could  better  afford 
to  pay  the  decree  and  the  royalties,  than  to  have  had  complete 
success  in  his  defence.  For  these  reasons,  a  consent  decree  in  a 
patent  case  can  never  be  a  proper  foundation  for  a  right  to  a  pre- 
liminary injunction  against  third  persons  ;  unless  it  appears  from 
the  nature  of  the  patented  thing,  or  from  convincing  evidence, 
that  the  defendant  consented  to  the  decree  because  his  defence 
had  become  hopeless,  and  not  because  it  had  become  inexpedient 
regardless  of  its  strength.  This  fact  can  never  appear  from  the 
nature  of  the  patented  thing,  where  that  thing  is  an  article  of 
commerce  ;  because  the  making  and  selling  of  articles  of 
commerce  is  subject  to  those  laws  of  trade  which  are  sure 
to  diminish  profits  whenever  monopoly  is  replaced  by  com- 
petition. The  considerations  stated  in  this  paragraph  are 
doubtless  those  which  have  caused  Federal  judges  to  disregard 
consent  decrees  when  deciding  upon  applications  for  prelimi- 
nary injunctions  in  patent  cases.1  It  is  true  that  the  same 
judge  who  made  the  last  of  the  decisions  just  cited,  once  based 
a  preliminary  injunction  partly  on  a  consent  decree  in  an- 
other  case,"  but  he  did  so  on  the  ground  that  the  circum- 
stances under  which  the  decree  was  entered,  convinced  him 
that  it  was  consented  to  because  the  defendant  was  unable  to 
make  a  successful  defence. 

§  673.  Where  a  defendant  admits  or  does  not  deny,  in  his 
pleadings,  the  validity  of  the  patent  upon  which  a  preliminary 
injunction  is  sought  against  him  ;  there  seems  to  be  no  reason 
why  such  an  admission  or  lack  of  denial  should  not  raise  a 
sufficient  presumption  of  that  validity  to  furnish  a  foundation 
to  a  right  to  a  preliminary  injunction  in  that  case.'  As  be- 

1  Spring  v.  Domestic  Sewing  Ma-  '*  Steam  Gauge   &  Lantern  Co.  v. 

chine  Co.,  4Bann.  &  Ard.  427,  1879  ;  Miller.  8  Fed.  Rep.  314,  1881. 

Hayes  u.  Leton,  5  Fed.  Rep.  521,1881;  »  New   York  Grape  Sugar  Co    v. 

De  Ver  Warner  v.   Bassett,    7  Fed.  American  Grape  Sugar  Co.,  10  Fed. 

Bep.  468,  1881.  Hep.  835,  1882. 


462  INJUNCTIONS.  [CHAP.  xxi. 

tween  the  parties  to  a  motion,  the  court  may  properly  assume 
every  statement  of  fact  to  be  true  which  is  made  by  the  com- 
plainant, and  expressly  or  tacitly  admitted  by  the  defendant. 
The  same  assumption  has  sometimes  been  asked  for  by  a  com- 
plainant, where  the  defendant  in  his  affidavits  denied  the 
validity  of  the  patent,  but  did  so  on  grounds  that  were  bad  in 
point  of  law.  The  argument  to  support  such  a  request  is  that 
a  frivolous  denial  is  no  denial  at  all,  and  is  therefore  a  tacit 
admission.  The  first  answer  to  that  argument  is  that  the  court 
will  not  decide,  on  a  motion  for  a  preliminary  injunction, 
whether  the  denial  is  frivolous  or  not,  and  the  second  answer  is 
that  even  a  frivolous  denial  is  not  the  same  thing  as  an  ad- 
mission. 

§  674.  An  interference  decision  of  the  Patent  Office  raises 
a  sufficient  presumption  of  validity  to  furnish  a  foundation  for 
a  preliminary  injunction,  where  the  defendant  is  the  person, 
or  the  legal  representative  or  assignee  of  the  person,  who  was 
defeated  in  the  interference,  and  where  he  denies  the  validity 
of  the  patent  on  no  other  ground  than  that  the  interference 
decision  was  wrong. '  But  such  an  interference  decision  can- 
not be  invoked  against  third  parties,  because  it  does  not  rise  to 
the  dignity  and  force  of  an  adjudication  of  a  court.  And  it 
cannot  be  invoked  as  against  any  defence  not  involved  in  it, 
because  it  has  no  relevancy  to  any  such  defence.* 

§  675.  The  complainant's  title  to  the  patent  upon  which  a 
preliminary  injunction  is  asked  must  be  clear,  or  the  injunc- 
tion will  be  refused.'  The  best  evidence  of  that  title  is  found 
in  the  patent,  if  the  complainant  is  the  patentee  ;  and  if  he  is 
an  assignee  or  grantee,  he  should  produce  the  original  assign- 
ments or  grants  which  constitute  his  title,  or  produce  duly 
certified  copies  thereof.  Where  the  complainant's  title  papers 
require  judicial  construction,  in  order  to  determine  their  legal 
effect,  it  is  the  duty  of  the  court  to  give  them  that  construc- 
tion upon  a  motion  for  a  preliminary  injunction,  rather  than 

1  Pentlarge  v.  Beeston,  14  Blatch.  Hep.  856,  1880. 

364,   1877;  Holliday  v.   Pickhardt,  »  Mowry  v.  Kailroad  Co.,  5  Fisher, 

12  Fed.  Eep.  147,  1882.  587,  1872. 

8  Greenwood  v.  Bracher,   1  Fed. 


CHAP.    XXI.]  INJUNCTIONS.  4G3 

to  postpone  the  question  to  a  final  hearing,  unless  it  is  made 
to  appear  that  evidence  aliunde  is  necessary  to  their  proper 
interpretation.1 

§  676.  Infringement  or  danger  of  infringement  by  the 
defendant,  must  be  clearly  proven  by  a  complainant  in  order 
to  entitle  him  to  a  preliminary  injunction.3  Precisely  what 
facts  will  give  rise  to  such  a  probability  of  future  infringement 
as  will  justify  a  preliminary  injunction  without  proof  of  past 
infringement,  cannot  specifically  be  stated.  Courts  will  never 
insist  on  absolute  proof  of  what  the  defendant  will  do  if  not 
enjoined  ;  for  such  proof  can  never  be  produced,  and  because 
it  cannot  harm  a  person  to  enjoin  him  from  doing  a  thing 
which  he  would  not  do  any  way.  A  moderate  probability  that 
a  defendant  intends  to  do  something  which  would  clearly 
infringe  the  complainant's  patent  will  therefore  be  sufficient 
to  entitle  the  latter  to  a  preliminary  injunction  in  an  otherwise 
proper  case. 

Proof  of  infringement  cannot  be  made  by  affidavits  which 
merely  state  that  conclusion  of  fact.  The  complainant  must 
prove  the  specific  character  of  the  defendant's  doings.3  Upon 
that  evidence  the  court  will  examine  and  decide  the  question 
of  infringement  in  the  light  of  whatever  expert  testimony  the 
case  may  contain,4  and  in  the  light  of  whatever  construction 
of  the  patent  it  finds  on  examination  to  be  just.*  But  if  the 
court  is  unable  to  arrive  at  a  conclusion  without  the  aid  of 
further  expert  testimony,  it  will  refuse  to  grant  the  injunction 
till  that  testimony  is  supplied.' 

1  Clum   v.   Brewer,    2  Curtis,  507,       McCrary,  160,  1880. 

1855  ;  Dodge  v.  Card,  2  Fisher,  116,  4  Blanchard   v.  Beeves,  1  Fisher, 

1860.  105,  1850. 

2  Pullman   v.  Kailroad  Co.,  5  Fed.  *  Many  v.  Sizer,  1  Fisher,  33,  1849  ; 
Rep.  72,   1880  ;  Marks  v.  Corn,   11  Clum  v.  Brewer,  2  Curtis,  507,  1855  ; 
Fed.   Hep.    900,   1881  ;    Coburn    v.  Coburn  v.  Clark,  15  Fed.  Rep.  807, 
Clark,  15  Fed.  Rep.  807, 1883  ;  Wood-  1883. 

worth  v.   Stone,  3  Story,  752,  1845;  6  United  States  Annunciator  Co.  u. 

Poppenhusen  v.  Comb  Co.,  4  Blatch.  Sanderson,  3  Blatch.  186,  1854;  Howe 

187,  1858  ;    White  v.  Heath,  10  Fed.  v.  Morton,  1  Fisher,  600,  1860  ;  Boyd 

Rep.  293,  1882.  v.  McAlpin,  3  McLean,  430,  1844. 
*  Kirby  Bung  Mfg.  Co.  v.  White,  1 


464  INJUNCTIONS.  [CHAP.  xxi. 

In  order  to  entitle  a  complainant  to  a  preliminary  injunc- 
tion, it  is  not  necessary  for  him  to  prove  any  infringement  to 
have  been  committed  or  threatened  within  the  particular  dis- 
trict in  which  the  court  exercises  jurisdiction  ; '  nor  that  the 
defendant's  infringement  has  not  ceased  before  the  motion  is 
heard."  Indeed  no  injunction  can  be  averted  by  affirmative 
evidence  that  the  defendant  has  ceased  to  infringe,  even 
though  coupled  with  a  promise  that  he  will  infringe  no  more.' 

§  677.  The  defences  which  a  defendant  may  make  to  a 
motion  for  a  preliminary  injunction  may  be  by  way  of  traverse, 
or  by  way  of  confession  and  avoidance.  A  defence  of  the 
former  sort  consists  in  denying,  and  attempting  to  disprove, 
one  or  more  of  the  facts  which  constitute  the  complainant's 
prima  facie  case.  A  denial  alone  is  useless,  even  where  it  is 
embodied  in  an  answer.4  Where  the  denial  is  supported  by 
affidavits  which  contradict  those  of  the  complainant,  the  judge 
will  refuse  the  injunction  if  he  believes  the  defendant's  affi- 
davits to  be  the  true  ones,  or  if  he  is  unable  to  decide  which 
set  of  deponents  tell  the  truth.6  No  remedy  invoked  in  patent 
cases  is  so  summary  in  operation  or  so  dangerous  to  justice  as 
a  preliminary  injunction,  and  the  courts  will  not  apply  that 
remedy  to  cases  where  the  complainant's  prima  facie  evidence 
of  a  right  thereto,  is  overthrown  or  seriously  damaged  by  the 
evidence  of  the  defendant. 

§  678.  Defences  by  way  of  confession  and  avoidance  to 
motions  for  preliminary  injunctions,  may  confess  and  avoid 
the  adjudication  or  acquiescence  upon  which  the  plaintiff 
bases  the  presumption  of  the  validity  of  his  patent ;  or  may 
interpose  any  one  of  several  facts  entirely  outside  of  the  com- 
plainant's prima-facie  case. 


1  Wilson    v.   Sherman,   1  Blatch.  er,  112,  1866  ;  Goodyear  v.  Berry,  3 

541,  1850  ;  Wheeler  v.  McCormick,  4  Fisher,  439,  1868. 

Fisher,   433,    1871  ;    Thompson    v.  3  Rumford    Chemical    Works    v. 

Mendelsohn,   5  Fisher,    188,   1871  ;  Vice,  14  Blatch.  179,  1877. 

Macaulay  v.   Machine  Co.,   9  Fed.  4  Clum  v.  Brewer,  2  Curtis,  507, 

Rep.  698,  1881.  1855. 

1  Jenkins  v.  Greenwald,  2  Fisher,  6  Cooper  v.  Mattheys,  3  Penn.  Law 

37,  1857  ;  Potter  v.  Crowell,  3  Fish-  Journal  Reports,  40,  1842. 


CHAP.  XXI.]  INJUNCTIONS.  465 

§  679.  The  effect  of  an  adjudication  may  be  averted  by 
evidence  of  some  good  defence  to  the  patent,  together  with 
evidence  showing  that  defence  not  to  have  been  interposed  in 
the  prior  adjudicated,  case.1  So  also,  the  effect  of  a  prior 
adjudication  may  sometimes  be  averted  by  showing  that  the 
case  adjudged  involved  questions  of  nicety  and  importance, 
and  has  been  taken 'to  the  Supreme  Court  for  review,"  or  has 
gone  no  further  than  a  verdict  of  a  jury  which  is  still  pending 
on  a  motion  for  a  new  trial.3  But  courts  will  not  always 
disregard  adjudications  which  are  thus  suspended.  They  are 
a  good  foundation  for  preliminary  injunctions,  unless  the 
defendant  can  convince  the  judge  that  they  were  wrong.4  The 
effect  of  a  prior  adjudication  cannot  be  averted  by  showing 
that  there  has  been  an  adjudication  against  the  validity  of  the 
patent,  if  it  also  appears  that  the  lost  cause  was  decided  on  a 
part  only  of  the  material  evidence  ; &  nor  by  showing  that  the 
validity  of  the  patent  is  in  question  in  some  other  case  which 
has  long  been  pending  and  still  awaits  adjudication.8  Where 
the  patent  sued  upon  is  a  reissue  of  the  one  adjudicated,  a 
substantial  doubt  of  the  validity  of  the  reissue  as  a  reissue, 
must  be  solved  against  a  motion  for  a  preliminary  injunc- 
tion.7 

§  680.  The  effect  of  acquiescence,  as  a  foundation  for  a  pre- 
liminary injunction,  may  be  averted  by  evidence  that  it  was 
not  general,  or  was  not  genuine  :  by  proof  that  while  some 
acquiesced  in  the  patent,  many  others  did  not  ;  or  by  proof 


1  Parker   v.    Brant,    1  Fisher,   58,  3  Day  v.  Hartshorn,  3  Fisher  34,. 

1850  ;    Union  Paper    Bag  Machine  1855. 

Co.  v.  Binney,  5  Fisher,  168,  1871  ;  4  Forbush   v.  Bradford,  1  Fisher,. 

American    Nicolson    Pavement   Co.  317, 1858  ;  Day  v.  Hartshorn,  3  Fish- 

v.   Elizabeth,  4   Fisher,    189,  1870  ;  er,  32,  1855  ;    Morris   v.  Mfg.  Co.  31 

Bailey   Wringing    Machine    Co.    v.  Fisher,  70,  1866 ;  Wells  v.   Gill,   6; 

Adams,   3  Bann.   &  Ard.  97,  1877  ;  Fisher,  89,  1872. 

Goodyear    v.    Allyn,    6  Blatch.   35,  5  United  States  Stamping  Co.  v;. 

1868;  Robinson  v.  Randolph,  4  Bann.  King,  4  Bann.  &  Ard.  469,  1879. 

&  Ard.  163,  1879;  Page  v.  Telegraph  "  Atlantic   Giant    Powder  Co.   v. 

Co.  18  Blatch.  125,  1880.  Goodyear,  3  Bann.  &  Ard.  161,  1877. 

9  Morris  v.  Mfg.  Co.  3  Fisher,  70,  '  Poppenhusen  v.  Falke,  2  Fisher, , 

1866.  181,  1861. 


4:60  INJUNCTIONS.  [CHAP.  xxi. 

that  those  who  did  acquiesce,  did  so  collusively  and  not  be- 
cause they  believed  the  patent  to  be  invulnerable.  And  the 
effect  of  acquiescence  may  also  be  averted  by  evidence  or 
arguments  which  strongly  tend  to  show  that  the  patent  is 
really  invalid.1 

§  681.  The  fact  that  the  patent  sued  upon  has  been  repealed, 
or  that  it  has  expired  by  its  own  limitation,  or  because  of  the 
expiration  of  some  foreign  patent  for  the  same  invention,  is 
of  course  a  good  defence  to  a  motion  for  a  preliminary  injunc- 
tion ;  as  also  is  any  fact  which  overthrows  the  title  of  the 
complainant. 

§  682.  A  license  is  a  good  defence  to  a  motion  for  a  pre- 
liminary injunction  ;  and  where  the  affidavits  leave  the  exist- 
ence of  a  valid  license  in  doubt,  a  preliminary  injunction  will 
be  refused.2  Where  the  question  of  license  depends  upon 
the  construction  of  documents,  the  court  will  constme  them 
on  a  motion  for  a  preliminary  injunction,  unless  it  is  made  to 
appear  that  evidence  exists  which  is  proper  and  necessary  to  be 
produced  in  order  to  enable  the  judge  to  arrive  at  the  inten- 
tion of  the  parties  to  an  ambiguous  instrument.3  Where  the 
license  set  up  has  been  forfeited  for  non-payment  of  the 
royalty,  a  preliminary  injunction  will  be  granted,  in  an  other- 
wise proper  case,  unless  the  defendant  pays  that  royalty  within 
some  reasonable  time  to  be  fixed  by  the  court  ; 4  and  where 
it  has  been  forfeited  by  a  forbidden  use  of  the  patented  thing, 
a  preliminary  injunction  may  be  granted  as  to  that  use,  but 
not  as  to  the  kind  of  use  authorized  by  the  license.*  The 
principle  of  these  precedents  appears  to  be  that  a  preliminary 
injunction  will  not  be  used  to  enforce  a  forfeiture,  when  the 
doings  which  caused  the  forfeiture  can  be  otherwise  compen- 
sated. So,  also,  a  preliminary  injunction  will  be  refused 
where  the  defendant  had  a  license  which  he  forfeited  by 

1  Bradley  &  Hubbard  Mfg.  Co.  v.  165,  1868. 

The  Charles  Parker  Co.  17  Fed.  Rep.  4  Woodworth  v.  Weed,   1    Blatch. 

240,  1883.  165,  1846  ;  Goodyear  v.  Rubber  Co. 

9  Beane  v.  Orr,  2  Bann.  &  Ard.  176,  3  Blatch.  455,  1856. 

1875.  6  Wilson  v.  Sherman,  1  Blatch.  536, 

*  Hodge  v.  Railroad  Co.  6  Blatch.  1850. 


CHAP.   XXI.]  INJUNCTIONS.  467 

omission  to  pay  the  royalty,  if  that  omission  was  necessitated 
by  bad  faith  on  the  part  of  the  complainant. ' 

§  683.  Estoppel  is  also  a  good  defence  to  a  motion  for  a 
preliminary  injunction,  and  will  prevail  against  a  motion  for 
that  relief,  upon  the  same  facts  that  would  make  it  prevail  in 
an  action  at  law.8 

§  684.  Laches  is  a  good  defence  to  a  motion  for  a  prelimi- 
nary injunction  ; 3  and  delay  works  laches,  unless  it  is  excused 
by  some  fact  which  renders  it  reasonable.4  The  delay  which, 
if  unexcused,  works  laches  in  respect  of  an  application  for  a 
preliminary  injunction,  is  that  which  occurs  after  the  infringe- 
ment sued  upon  was  committed,6  and  not  any  delay  which 
occurred  before  that  time.  Delay  after  the  infringement,  may 
occur  before  the  suit  is  brought,  or  it  may  occur  after  that 
event,  and  before  any  motion  is  made  for  a  preliminary  injunc- 
tion. 

Three  months'  delay  of  the  first  kind,  for  which  there  was 
no  particular  excuse,  and  which  caused  no  injury  to  the  de- 
fendant, has  been  held  not  to  constitute  laches  ; "  but  in 
another  case,  eighteen  months' '  and  in  another,  two  years' 
delay  was  held  to  have  that  effect  ; e  and  in  still  another,  a 
delay  of  two  years  by  the  then  owners  of  the  patent,  was  held 
to  preclude  their  assignees  from  obtaining  a  preliminary  in- 
junction.' Two  years'  delay  to  sue  was  excused  in  one  case 
on  the  ground  that  the  complainant  was  much  occupied  with 
other  business  during  the  time,  and  that  he  repeatedly  notified 
the  defendant  to  cease  his  infringing.10  The  pendency  of  a 
test  case  under  a  patent  is  also  a  good  excuse  for  delay  in 

1  Crowell  v.  Parmeter,  3  Bann.  &  «  Union  Paper  Bag  Machine  Co. 

Ard.  480,  1878.  v.  Binney,  5  Fisher,  167,  1871. 

8  Sections  467  to  469  of  this  book.  '  Hockholzer  v.  Eager,  2  Sawyer, 

1  Hockholzer  v.   Eager,  2  Sawyer,  363,   1873. 

363,  1873.  «  Sperry   v.   Ribbans,   3  Bann.  A 

4  Wortendyke  v.  White,  2  Bann.  &  Ard.  261,  1878. 

Ard.  26,  1875  ;    Green  v.  French,  4  9  Spring  v.  Machine  Co.  4  Bann.  A 

Bann.  &  Ard.  169,  1879  ;  Collignon  Ard.  428,  1879. 

v.  Hayes,  8  Fed.  Rep.  912,  1881.  '»  Collignon  v.  Hayes,  8  Fed.  Rep. 

8  American  Middlings  Purifier  Co.  912,  1881. 
v.  Christian,  3  Bann.  <fc  Ard.  50,  1877. 


468  INJUNCTIONS.  [CHAP.  xxi. 

bringing  actions  against  other  infringers,  when  those  other 
infringers  interpose  the  defence  of  laches  to  a  motion  for  a 
preliminary  injunction.1 

Delay  after  a  suit  is  begun  will  constitute  such  laches  as 
will  defeat  an  application  for  a  preliminary  injunction,  if  that 
delay  continues  till  the  defendant  has  closed  his  evidence  for 
the  interlocutory  hearing  of  the  case  ;'  and  a  fortiori  when  it 
continues  till  the  case  is  about  to  be  argued  on  the  interlocu- 
tory hearing.3 

§  685.  Where  the  complainant  has  made  out  a  prima  facie 
case  fora  preliminary  injunction,  and  where  the  defendant  has 
not  overthrown  that  case,  the  court  is  generally  bound  to 
grant  such  an  injunction 4  upon  all  or  upon  part  of  the 
claims  of  the  patent,  according  to  the  merits  of  the  case.* 
Under  some  circumstances,  however,  the  court  can  give  the 
defendant  the  option  to  submit  to  such  an  injunction,  or  to 
give  a  bond  to  secure  any  decree  for  profits  or  damages  which 
may  ultimately  be  awarded  against  him  ;  but  a  bond  can  be 
required  only  in  a  case  where  an  injunction  must  issue  if  the 
bond  is  not  given.'  The  circumstances  under  which  it  is 
proper  to  give  the  defendant  that  option  include  the  follow- 
ing. 

§  686.  Bonds  may  be  taken,  instead  of  preliminary  injunc- 
tions being  imposed,  if  the  complainant  habitually  avails  him- 
self of  his  exclusive  right  by  receiving  royalties  for  licenses, 

1  Van  Hook  v.  Pendleton,  1  Blatchi  v.  Mere,  3  Fisher,  386,  1868  ;  Ely  v. 
187,  1846  ;  Bumford  Chemical  Works  Mfg.  Co.  4  Fisher,  64,  1860  ;  Kum- 
v.  Vice,  14  Blatch.  181,  1877  :  Green  ford  Chemical  Works  v.  Vice,  14 
v.  French,  4  Bann.  &  Ard.  169, 1879  ;  Blatch.  181,  1877  ;  American  Mid- 
Colgate  v.  Gold  <fe  Stock  Telegraph  dlings  Purifier  Co.  v.  Christian,  3 
Co.  4  Bann.  &  Ard.  425,  1879.  Bann.  &  Ard.  54,  1877  ;  Green  v. 

*  Wooster  v.  Machine  Co.  4  Bann.  French,  4  Bann.  &  Ard.  169,  1879. 
&  Ard.  319,  1879.  8  Colt  v.   Young,   2  Blatch.   471, 

3  Andrews  v.  Spear,  3  Bann.  &  Ard.  1852  ;  Potter  v.  Holland,   1  Fisher, 
80,  1877.  382,  1858. 

4  Gibson  v.  Van  Dresar,  1  Blatch.  *  Forbush  v.  Bradford,   1  Fisher, 
535,  1850  ;    Sickels    v.    Mitchell,    3  317, 1858  ;  American  Middlings  Pu- 
Blatch.  548,  1857  ;  Sickels  v.  Tiles-  rifier  Co.  v.  Atlantic  Milling  Co.  3 
ton,  4  Blatch.  109,  1857  ;  Potter  v.  Bann.  &  Ard.  173,  1877. 

Fuller,  2  Fisher,  251,  1862  ;  Conover 


CHAP.   XXI.]  INJUNCTIONS.  469 

rather  than  by  making  and  selling,  or  making  and  using,  the 
patented  article  himself  while  permitting  no  other  to  do  so.1 
But  where  the  complainant  is  able  and  willing  to  supply  the 
market  for  that  article,  the  fact  that  the  defendant  is  willing 
to  take  a  license,  and  able  to  pay  for  one,  does  not  entitle  him 
to  the  option  of  giving  bonds,  if  the  complainant  declines  to 
give  him  a  license.2 

§  687.  So  also,  a  defendant  is  entitled  to  the  option  of 
giving  bonds  instead  of  being  enjoined,  where  his  infringing 
machinery  contains  costly  features  which  are  not  covered  by 
the  complainant's  patent  ; 3  or  where  the  infringing  article 
was  purchased  in  good  faith,  having  been  constructed  in  con- 
formity to  a  junior  patent ; 4  or  where  it  was  so  constructed 
by  the  defendant  himself  ;  or  where  the  defendant  is  only  a 
seller  of  specimens  of  the  patented  article,  a  suit  being  pend- 
ing against  the  manufacturer  from  whom  he  received  those 
specimens  ; 5  or  where  the  prior  adjudication  upon  which 
the  right  to  a  preliminary  injunction  is  based,  has  been  carried 
to  the  Supreme  Court,  and  is  still  pending  there  ; '  or  where 
the  injunction,  if  granted,  would  be  very  damaging  to  the  in- 
terests of  the  defendant,  and  not  particularly  beneficial  to  the 
legitimate  rights  of  the  complainant  ; "  or  where  public  policy 
forbids  a  discontinuance  of  the  defendant's  use  of  the  patented 
invention  ; 8  or  where,  for  any  reason,  a  preliminary  injunc- 

1  Howe  v.  Morton,  1  Fisher,  601,  4  United   States   Annunciator  Co. 

1860  ;    Hodge    v.    Eailroad    Co.    6  v.  Sanderson  3  Blatch.  184,  1854. 

Blatch.  166,  1868  ;  Dorsey  Harvester  *  Irwin  v.  McEoberts,  4  Bann.  & 

Rake  Co.  v.  Marsh,  6  Fisher,   387,  Ard.  414,  1879. 

1873  ;  Colgate  v.  Gold  &  Stock  Tel-  •  Wells  v.  Gill,  6  Fisher,  93,  1872. 

egraph  Co.    16  Blatch.    503,  1879  ;  7  Morris  v.  Mfg.  Co.  3  Fisher,  68, 

Kirby  Bung  Mfg.    Co.  v.  White,  1  1866  ;  Morris  v.  Shelbourne,  4  Fish- 

McCrary,  155, 1880  ;  New  York  Grape  er,  377,  1871  ;  Dorsey  Harvester  Rake 

Sugar  Co.  v.  American  Grape  Sugar  Co.  u.   Marsh,   6  Fisher,  387,  1873  ; 

Co.  10  Fed.  Rep.  837, 1882;  McMillin  Kirby   Bung   Mfg.  Co.  v.  White,  1 

v.  Conrad,  16  Fed.  Rep.  128, 1883.  McCrary,  155,  1880  ;  Hoe  v.  Boston 

4  Baldwin  v.   Bernard,  5  Fisher,  Daily  Advertiser,  14  Fed.  Rep.  914, 

447,  1872.  1883. 

3  Howe  v.  Morton,  1  Fisher,  587,  8  Guidet  v.  Palmer,  10  Blatch.  220, 

I860  ;   Stainthorp    v.    Humiston  2  1872. 
Fisher,  311,  1862. 


470  INJUNCTIONS.  [CHAP.  xxi. 

tion  would  operate  unjustly.1  It  is  no  part  of  the  legitimate 
office  of  a  preliminary  injunction  to  force  the  defendant  to 
compromise  a  disputed  claim  ; *  nor  to  compel  him  to  give 
the  complainant  a  contract  to  purchase  specimens  of  the  pat- 
ented thing.8 

But  in  the  absence  of  every  special  reason  for  giving  the 
defendant  the  option  of  giving  bonds,  instead'  of  submitting  to 
an  injunction,  that  option  cannot  be  demanded  by  him  ;  * 
nor  ought  it  to  be  granted  by  the  court.1  Where  the  de- 
fendant is  entitled  to  the  option  of  giving  bonds  or  being  en- 
joined, and  chooses  the  former  alternative,  but  is  unable  to 
furnish  the  bonds  promptly,  an  injunction  may  issue  against 
him,  coupled  with  an  order  for  its  dissolution  whenever  the 
proper  bonds  are  approved  and  filed." 

§  688.  Bonds  may  be  required  from  a  complainant,  under 
some  circumstances,  before  a  preliminary  injunction  will  be 
granted.  Such  bonds  are  conditioned  on  the  ultimate  success 
of  the  complainant  in  sustaining  his  claim,  and  may  be  re- 
quired in  a  case  where  the  injunction,  if  granted,  will  cause 
serious  injury  to  the  defendant.7  If  that  is  also  a  case  where 
the  defendant  is  entitled  to  avert  the  injunction  by  giving  a 
bond,  that  option  will  first  be  given  to  him.  If  he  chooses  to 
file  a  bond,  of  course  none  will  be  required  from  the  other 
side,  but  if  he  prefers  to  submit  to  an  injunction,  the  injunc- 


1  Union  Paper-Bag  Machine  Co.  250,  1843  ;  Foster  v.  Moore,  1  Curtis, 

v.  Binney,  5  Fisher,  169,  1871.  279,  1852  ;  Howe  v.  Morton,  1  Fish- 

5  Morris  v.  Mfg.  Co.  3  Fisher,  70,  er,  586,  1860  ;  Stainthorp  v.  Humis- 

1866.  ton,  2  Fisher,  311,  1862  ;  Goodyear  u. 

3  American    Nicholson   Pavement  Hills,  3  Fisher,  134,  1866  ;  Sykes  v. 
Co.  v.  Elizabeth,  4  Fisher,  197,  1870.  Manhattan  Co.  6  Blatch.  496, 1869  ; 

4  Consolidated     Fruit-Jar    Co.   v.  Gilbert  &  Barker  Mfg.  Co.  v.  Buss- 
Whitney,  1  Bann.  &  Aid.  361,  1874.  ing,  12  Blatch.  426,  1875. 

s  Gibson  v.  Van  Dresar,  1  Blatch.  T  Orr  v.  Littlefield,  1  Woodbury  <fc 
532, 1850  ;  Tracy  v.  Torrey,  2  Blatch.  Minot,  20,  1845  ;  Brammer  v.  Jones, 
275,  1851  ;  Tilghman  v.  Mitchell,  4  3  Fisher,  340,  1867  ;  Shelly  v.  Bran- 
Fisher,  615, 1871  ;  Me  Williams  Mfg.  nan,  4  Fisher,  198,  1870  ;  Consoli- 
Co.  v.  Blundell,  11  Fed.  Rep.  419,  dated  Fruit-Jar  Co.  v.  Whitney,  1 
1882.  Bann.  &  Ard.  361,  1874. 

'  Brooks   v.   Bicknell,  3  McLean, 


CHAP.  XXI.]  INJUNCTIONS.  471 

tion  will  be  granted  only  upon  the  filing  of  a  proper  indem- 
nity bond  by  the  complainant. 

§  689.  A  preliminary  injunction  cannot  be  averted  on  the 
sole  ground  that  an  action  at  law  for  the  damages  to  be  caused 
by  the  infringement,  would  be  a  plain,  adequate,  and  complete 
remedy  therefor.  In  many  cases  that  would  not  be  true,  and 
the  court  cannot  determine  on  affidavits  whether  it  would  be 
true  in  a  particular  case  or  not.  A  motion  for  a  preliminary 
injunction  is  not  to  be  defeated  on  a  possibility  that  the  com- 
plainant might  be  able  to  obtain  damages  for  the  wrong  which 
he  seeks  to  prevent.  But  even  where  it  is  plain  that  the 
damages  recoverable  in  an  action  at  law,  would  be  as  benefi- 
cial to  the  complainant  as  an  injunction  would  be,  that  fact 
does  not  oust  the  right  of  the  complainant  to  the  latter  relief. 
The  case  is  analogous  to  actions  in  equity  for  the  specific  per- 
formance of  contracts  to  sell  real  property.  The  bills  in  such 
cases  seldom  show,  and  never  are  required  to  show,  that  an 
action  at  law  for  damages  would  not  be  a  plain,  adequate,  and 
complete  remedy  for  the  failure  to  perform.  "  Ordinarily  a 
vendor,  in  the  recovery  of  pecuniary  damages,  has  an  adequate 
remedy  at  law,  but  he  has  a  choice  of  remedies.  He  may 
resort  either  to  a  court  of  law  or  a  court  of  equity."  Bills 
for  preliminary  injunctions  in  patent  cases  are  never  obnoxious 
to  Section  723  of  the  Revised  Statutes,  because  the  word 
"  case"  in  that  section  is  to  be  interpreted  specifically  and  not 
generically.  "  Suits  in  equity  shall  not  be  sustained  in  either 
of  the  courts  of  the  United  States  in  any  case  where  plain, 
adequate,  and  complete  remedy  may  be  had  at  law."  This 
statute  regards  an  action  in  equity  to  restrain  infringement  of 
a  patent,  as  a  case  for  an  injunction,  and  not  merely  as  a  pat- 
ent case.  It  therefore  opposes  no  obstacle  to  the  jurisdiction 
of  equity  in  such  a  case. 

§  690.  Where  the  defendant  withdraws  his  opposition  to  a 
motion  for  a  preliminary  injunction  before  the  motion  is  de- 
cided, the  injunction  will  be  granted  pro  confcsso,  and  the 

1  Crary    v.     Smith,    2    Comstock  *  Bevised  Statutes,  Section  723. 

(N.  ¥.),  62,  1848. 


472  INJUNCTIONS.  [CHAP.  xxi. 

court  will  decline  to  render  a  decision.1  That  is  to  say  :  a 
consent  decree  will  be  entered  as  a  consent  decree,  and  not  as 
one  based  on  a  conclusion  of  the  judicial  mind.  If  this  rule 
were  otherwise,  parties  between  whom  there  continued  to  be 
no  real  contest  might  manage  to  secure  decisions  from  courts 
which  would  operate  to  their  mutual  advantage,  and  to  the 
serious  disadvantage  of  strangers  to  the  litigation. 

§  691.  The  discretion  of  the  court  was  said,  in  some  of  the 
older  cases,  to  be  the  real  criterion  of  judgment,  when  decid- 
ing motions  for  preliminary  injunctions  in  patent  cases.  The 
doctrine  was  a  necessity  in  the  beginning  of  the  evolution  of 
the  patent  laws,  because  the  judges  could  then  find  but  few 
precedents  to  guide  or  to  warn.  At  present  the  fact  is  other- 
wise. Approved  precedents  can  now  be  found  on  nearly 
every  point  that  can  arise.  No  other  branch  of  the  patent 
law  is  proportionately  richer  in  that  respect,  than  the  branch 
which  relates  to  preliminary  injunctions.  But  there  is  still  a 
sense  in  which  the  granting  or  refusing  such  a  writ  may  truly 
be  said  to  rest  in  the  discretion  of  the  judge.  It  so  rests,  in 
the  sense  that  no  appeal  lies  from  his  decision.3  But  that  fact 
is  not  a  reason  why  a  judge  should  be  asked  to  disregard  pre- 
cedents when  making  up  his  judicial  opinion.  He  is  equally 
bound  by  his  oath  and  by  his  honor  to  decide  cases  according 
to  law,  whether  an  appeal  lies  from  his  decision  or  not. 
Indeed,  if  it  is  possible  for  a  judge  to  hew  closer  to  the  line 
of  statutes  and  of  precedents  in  one  class  of  cases  than  he 
ought  to  do  in  all  classes,  he  will  be  particularly  scrupulous  to 
do  so  in  whatever  class  his  decision  will  be  final,  and  any  error 
remediless. 

§  692.  A  motion  to  dissolve  a  preliminary  injunction  may 
be  made  at  any  time,'  upon  reasonable  notice  to  the  complain- 
ant's solicitor  ;  *  and  it  will  be  promptly  granted  where  the 


1  American  Middlings  Purifier  Co.  Chancery  (N.  Y.),  173,  1819  ;  Cam- 

v.  Vail,  15  Blatch.  315,  1878.  mack  v.  Johnson,  2  New  Jersey 

»  Earth  Closet  Co.  v.  Fenner,  5  Equity,  163,  1839  ;  Jones  v.  Bank, 

Fisher,  20,  1871.  5  How.  (Miss.),  43,  1840. 

3  Minturu  v.  Seymour,  4  Johnson's  4  Wilkins  v.  Jordan,  3  Washing- 


CHAF.    XXI.]  INJUNCTIONS.  473 

judge  becomes  convinced  that  the  granting  of  the  injunction 
was  erroneous  in  point  of  law  ;'  or  where  the  defendant  prop- 
erly proves  any  fact  which  would  have  been  fatal  to  the 
motion  for  the  preliminary  injunction,  if  presented  at  the  time 
that  motion  was  heard,  and  shows  that  the  evidence  could  not 
with  reasonable  diligence  have  been  presented  at  that  hear- 
ing.' So  also,  a  dissolution  of  a  preliminary  injunction  may 
be  based  on  a  fact  which  arose  after  the  injunction  was 
granted  :  for  example,  on  the  fact  that  the  complainant,  after 
that  event,  assigned  all  his  interest  in  the  future  duration  of 
the  patent  to  another  ; s  or  on  the  fact  that  he  omitted  to 
prosecute  his  case  toward  an  interlocutory  hearing  with  the 
speed  which  the  rules  of  court  require.4 

§  693.  A  motion  to  dissolve  an  injunction  for  error  in  point 
of  law,  -must  be  based  on  a  point  which  was  established  after 
the  injunction  was  granted,  or  which  was  obviously  overlooked 
or  misweighed  by  the  judge  at  that  time.  It  would  be  un- 
professional as  well  as  unavailing  for  counsel  to  move  a  dis- 
solution on  the  ground  that  the  judge  wrongly  reasoned  out 
his  conclusion  from  the  premises  from  which  he  proceeded. 
Courts  ought  not  to  be  asked  to  change  their  judgments  on 
points  of  law,  unless  the  law  has  changed  or  been  newly  for- 
mulated in  the  mean  time,  or  unless  some  special  error  can  be 
pointed  out.  Few  things  are  more  trying  to  the  patience  of 
judges,  or  more  useless  to  the  interests  of  clients,  than  the  rep- 
etition of  old  and  well  understood  arguments. 

§  694.  Motions  to  dissolve  an  injunction  on  account  of 
newly  discovered  facts,  require  the  mover  to  assume  the  bur- 
den of  establishing  those  facts,  because  when  an  injunction  is 
once  granted,  it  is  presumed  to  have  been  granted  rightfully, 


ton,  226,  1813  ;  Caldwell  v.  Waters,  Whiteley,  2  Fisher,  125, 1860  ;  Young 

4  Cranch's   Circuit    Court   Reports,  v.  Lippman,  5  Fisher,  230,  1872. 

577,  1835.  s  Parkhurst  v.  Kinsman,  1  Blatch. 

1  Steam  Gauge  &  Lantern   Co.  v.  489,  1849. 

Miller,  11  Fed.  Rep.  719,  1882.  *  Robinson  v.  Randolph,  4  Bann. 

2  Woodworth  v.  Rogers,  3  Wood-  &  Ard.  318,  1879. 
bury  &  Minot,  135,  1847  ;  Hussey  v. 


474:  INJUNCTIONS.  [CHAP.  xxi. 

until  the  contrary  is  made  to  appear.1  The  contrary  can  sel- 
dom or  never  be  made  to  appear  in  a  patent  case,  by  means  of 
the  defendant's  answer  ;  because  the  answer,  as  far  as  it  refers 
to  the  validity  of  the  patent  and  of  the  complainant's  title 
thereto,  is  generally  made  on  information  and  belief  only,  and 
as  far  as  it  refers  to  the  defendant's  infringement,  it  amounts 
only  to  a  general  denial.  Where  an  answer  is  on  file  at  the 
time  the  motion  to  dissolve  is  heard,  the  injunction  will  not 
be  dissolved  on  the  strength  of  any  facts  which  are  not  set  up 
in  the  answer  ;  *  but  whether  an  answer  is  on  file  at  that  time 
or  not,  the  facts  upon  which  the  motion  is  based  must  be 
shown  by  affidavits  or  by  other  admissible  evidence  ;  though,  if 
an  answer  is  on  file,  it  may  be  used  as  an  affidavit  as  far  as  its 
statements  are  made  on  the  knowledge  of  the  defendant,  and 
not  merely  on  information  and  belief. 

Affidavits  and  other  evidence  to  disprove  the  statements  of 
fact,  contained  in  the  moving  papers  of  the  defendant,  may  be 
introduced  by  the  complainant  ;  and  counter  evidence  from 
the  defendant  is  then  admissible  to  disprove  the  complainant's 
answering  allegations.  After  this,  it  becomes  the  duty  of  the 
judge  to  balance  the  documents  and  ascertain  where  the 
weight  of  them  is  ; '  and  he  will  decide  the  motion  against  the 
mover  unless  his  papers  preponderate.*  Service  on  the  op- 
posite party,  before  the  motion  is  heard,  of  the  affidavits  upon 
which  a  motion  to  dissolve  an  injunction  is  made  or  is  resisted, 
seems  to  be  called  for  by  the  same  reasons  which  call  for  simi- 
lar service  of  the  affidavits  upon  which  motions  for  prelimi- 
nary injunctions  are  based  or  are  withstood.' 

§  695.  A  motion  to  reinstate  a  dissolved  injunction  may  be 
made  at  any  time  ;  but  it  will  not  be  granted  on  the  same 
state  of  the  case  as  that  which  existed  when  the  injunction  was 
dissolved.  So,  also,  a  reinstated  preliminary  injunction  may 
be  again  dissolved  on  any  new  state  of  facts  which  show  that 

1  Woodworth  v.  Rogers,  3  Wood-  bury  &  Minot,  144,  1847. 

bury  &  Minot,  143,  1847.  4  Sparkman  v.  Higgins,  1  Blatch. 

1  Union  Paper  Bag  Machine  Co.  v.  207,  1849. 

Newell,  11  Blatch.  550,  1874.  s  Section  G62  of  this  book. 

3  Woodworth  v.  Rogers,  3  Wood- 


CHAP.  XXI.]  INJUNCTIONS.  475 

ita  continuation  would  be  unjust.1  In  patent  cases,  however, 
it  will  eeldora  occur  that  the  alternate  process  of  issuing  and 
dissolving  preliminary  injunctions  can  be  carried  further  than 
the  first  dissolution.  After  that,  the  court  will  let  the  matter 
rest  till  the  interlocutory  hearing,  unless  a  case  of  great  clear- 
ness and  pressing  necessity  is  presented  for  further  prelimi- 
nary action. 

§  696.  While  an  injunction  is  in  force,  it  must  be  obeyed, 
even  though  it  ought  never  to  have  been  granted.*  But  an 
injunction  is  not  in  force  if  it  was  issued  against  a  defendant 
over  whom  the  court  had  no  jurisdiction.  No  court  has  any 
authority  to  issue  an  injunction  against  such  a  person.  And 
where  courts  act  without  authority,  their  orders  are  nullities. 
They  are  not  voidable,  but  simply  void.3  It  follows  from 
these  rules,  that  if  a  Federal  court  were  to  issue  an  injunction 
against  a  defendant  before  he  is  served  with  a  subpoena  ad  re- 
spondendum  in  the  case,  that  injunction  would  be  void  and 
could  safely  be  disregarded  ;4  but  where  an  injunction  is 
granted  after  such  service,  and  upon  due  notice  of  the  motion 
therefor,  it  must  be  obeyed,  no  matter  how  obviously  unjust 
and  unwarrantable  its  granting  may  have  been.  And  when  an 
injunction  is  dissolved  which  ought  not  to  have  been  granted, 
the  enjoined  party  is  without  redress  for  the  injury  or  incon- 
venience he  may  have  suffered,  unless  the  court,  when  grant- 
ing the  injunction,  made  an  order  that  the  complainant  should 
pay  the  defendant  such  resulting  damages  as  he  might  sustain 
in  case  it  be  finally  decided  that  the  injunction  ought  not  to 
have  been  granted  ;  or  required  the  complainant  to  file  a  bond 
to  secure  those  damages,  as  a  condition  precedent  to  the  issu- 
ing of  the  injunction.* 

1  Tucker   v.  Carpenter,    1  Hemp-  45  New  York,  637,  1871. 

stead,  441,  1841.  8  Elliott  v.  Peirsol,  1  Peters.   340, 

3  Moat    v.    Holbein,    2    Edwards'  1828  ;  Wilcox  v.  Jackson,  13  Peters, 

Chancery  (N.  T.),  188,  1834  ;  Snlli-  511,  1839. 

van  v.  Judah,  4  Paige  (N.  Y.),  444,  4  Sickles  v.  Borden,  4  Blatch.  14, 

1834  ;  Kichards  v.  West,  2  Green's  1857  ;  Section  661  of  this  book. 

Chancery  (N.  J.),  456,  1836  ;  People  *  Lexington  &  Ohio  Railroad  Co. 

v.  Sturtevant,  5  Selden(N.  Y.),  263,  v.   Applegate,   8   Dana   (Ken.)   289, 

1853  ;  Erie  Railway  Co.  v.  Ramsay,  1839  ;    Sturgia  v.    Knapp,   33  Ver- 


476  INJUNCTIONS.  [CHAP.  XXL 

§  697.  A  permanent  injunction  follows  a  decision  in  favor 
of  the  complainant  on  the  interlocutory  hearing  of  a  patent 
case,  unless  some  special  reason  exists  for  its  being  refused,  or 
being  postponed  till  after  the  master's  report,  or  being  sus- 
pended pending  an  appeal.1 

§  698.  A  refusal  of  a  permanent  injunction  will  generally 
follow  from  the  fact  that  the  patent  has  expired  at  the  time  of 
the  interlocutory  decree.2  If  there  is  an  exception  to  this 
rule,  it  is  only  where  the  defendant  may  be  enjoined  from 
using  or  selling,  after  the  expiration  of  the  patent,  those  speci- 
mens of  the  patented  thing  which  he  unlawfully  made  before 
that  expiration.3 

§  699.  A  refusal  of  a  permanent  injunction  will  also  occur, 
•where  the  complainant  is  shown  to  have  assigned,  prior  to  the 
interlocutory  decree,  all  his  interest  in  the  future  duration  of 
the  patent  right  infringed  by  the  defendant.4 

§  700.  So,  also,  a  refusal  of  an  injunction  will  be  necessary, 
where  the  infringing  defendant  is  dead  at  the  time  of  the  in- 
terlocutory decree,  even  though  the  suit  may  have  been  re- 
vived against  his  legal  representative.8  In  such  a  case  no  in- 
junction will  lie  against  the  dead  defendant,  because  he  is  no 
longer  within  the  jurisdiction  of  the  court  ;  and  none  will  lie 
against  the  legal  representative,  because  he  never  infringed 
the  patent.  For  reasons  of  similar  legal  import,  an  injunction 
will  be  refused  where  the  defendant  is  a  corporation  and 
undergoes  legal  dissolution  before  the  interlocutory  decree. 
This  point  of  law  is  based  on  the  doctrine  that  a  court  will  not 
direct  a  writ  against  a  dead  corporation  ;'  and  also  upon  the 

mont,  486,  1860  ;    McKay  v.  Jack-  870,  1880  ;  American  Diamond  Rock 

man,  16  Reporter,  164,  1883.  Boring  Co.  v.  Marble  Co.   2    Fed. 

1  Potter  v.  Mack,   3  Fisher,   430,  Rep.  353,  355,   356,  1880  ;   Root  v. 

1868  ;   Rumford  Chemical  Works  v.  Railway  Co.  105  U.  S.  210,  1881. 

Hecker,  2  Bann.  &  Ard.  388,  1876.  «  Wheeler  u.  McCormick,  11  Blatch. 

s  Jordan  v.  Dobson,  2  Abbot's  U.  345,  1873  ;   Boomer  v.  Powder  Press 

8.    Reports,   415,    1870  ;    Signal  v.  Co.  13  Blatch.  107,  1875. 

Harvey,  18  Blatch.  356,  1880.  »  Draper    v.   Hudson,  1    Holmes, 

3  Parker  v.   Sears,  1  Fisher,   102,  208,  1873. 

1850  ;    American     Diamond     Rock  *  Mamma  v.  Potomac  Co.  8  Peters, 

Boring  Co.  v.  Sheldon,  1  Fed.  Rep.  286,  1834. 


CHAP.   XXI.]  INJUNCTIONS.  477 

rule  that  it  will  not  enjoin  an  act  which,  from  the  nature  of  the 
case,  cannot  be  committed.1 

§  701.  But  the  fact  that  the  defendant  has  ceased  to  infringe 
the  patent,  and  says  that  he  will  not  infringe  it  in  the  future, 
is  no  reason  for  refusing  an  injunction  against  him."  What- 
ever tort  a  man  has  once  committed,  he  is  likely  to  commit 
again,  unless  restrained  from  so  doing. 

§  702.  A  permanent  injunction  will  be  postponed  till  a  final 
decree,  when  such  a  postponement  is  necessary  to  save  the  de- 
fendant from  special  hardship,  and  is  not  injurious  to  the  just 
rights  of  the  complainant  ; 3  or  where  an  immediate  discon- 
tinuance of  the  defendant's  use  of  the  patented  article  is  con- 
trary to  public  policy.4  But  where  such  a  postponement  is 
allowed,  the  defendant  should  be  required  to  give  a  bond  for 
the  security  of  the  complainant.5 

§  703.  A  permanent  injunction  may  be  suspended,  pending 
an  appeal  from  a  final  decree  to  the  Supreme  Court,  at  the 
discretion  of  the  judge  who  decided  the  case  and  allowed  the 
appeal,  upon  such  terms  as  to  bond  or  otherwise  as  he  may  con- 
sider proper  for  the  security  of  the  rights  of  the  opposite 
party.6  Such  a  bond  should  be  conditioned  upon  the  result  of 
the  appeal,  and  should  be  separate  from  the  supersedeas  bond 
which  is  filed  when  the  appeal  is  perfected.  The  latter  bond 
secures  nothing  but  the  profits  or  damages  and  costs  which  ac- 
crued prior  to  the  final  decree,  together  with  the  future  interest 
on  those  items  ;  while  the  other  would  secure  the  profits  and 
damages  to  accrue  after  the  final  decree,  and  before  the 
Supreme  Court  decision.  Where  no  money  recovery  could 
indemnify  the  complainant  for  the  defendant's  unrestrained 

1  Potter  v.  Crowell,  3  Fisher,  115,  Co.  v.  North,   5  Blatch.  462,  1867  ; 

1866.  Potter  v.  Mack,  3  Fisher,  428,  1868  ; 

*  Jenkins  v.  Greenwald,  2  Fisher,  Dorsey  Harvester  Bake  Co.  v.  Marsh, 

42,  1857;  Potter  v.  Crowell,  3  Fisher,  6  Fisher,  401,  1873. 

115. 1866  ;  Rumford  Chemical  Works  4  Ballard    v.    Pittsburg,    12    Fed. 

v.  Vice,  14   Blatch.  180,  1877  ;   Bui-  Eep.  783,  1882. 

lock  Printing  Press  Co.  v.  Jones,  3  5  American  Middlings  Purifier  Co. 

Bann.  &  Ard.  19-3,  1878.  v.  Christian,  3'Bann.  &  Ard.  53,  1877. 

3  Barnard  v.  Gibson,   7  Howard,  •  Equity  Eule  93. 
657,  1849  ;    Yale  &  Greenleaf  Mfg. 


478  INJUNCTIONS.  [CHAP.  xxi. 

doings  pending  an  appeal  to  the  Supreme  Court,  then  it  may 
be  reasonable  not  to  suspend  the  permanent  injunction,  because 
the  presumption  and  the  probability  are  that  the  decree  of  the 
circuit  court  is  right,  and  because  of  two  evils  it  is  better  to 
incur  the  risk  of  that  which  is  least  to  be  expected. 

§  704.  A  permanent  injunction  may  be  dissolved  at  any 
time  within  two  years  after  the  expiration  of  the  term  of  court 
at  which  the  final  decree  in  the  case  was  entered  ;  and  such  a 
dissolution  will  be  had  where  the  defendant,  by  means  of  a 
supplemental  bill  in  the  nature  of  a  bill  of  review,  or  by  a  bill 
of  review,  secures  a  cancellation  of  that  decree.1  And  such 
a  dissolution  must  of  course  occur  whenever  the  final  decree 
in  the  case  is  reversed  by  the  Supreme  Court. 

§  705.  Injunctions  to  restrain  infringements  of  patents  may 
be  granted  independent  of  all  other  relief  ; a  but  no  injunction 
will  be  issued  on  account  of  an  infringement  which  is  so  trivial 
in  amount  as  to  be  below  the  dignity  of  the  court ; s  nor  to 
restrain  a  junior  patentee  from  bringing  actions  on  his  patent 
while  that  patent  is  still  free  from  an  adjudication  of  invalid- 
ity ; 4  nor  to  restrain  a  complainant  from  bringing  actions 
against  persons  who  are  using  or  selling  those  articles,  for  the 
making  of  which,  the  action  at  bar  was  brought  against  the 
defendant.*  This  last  point  has  been  decided,  or  stated,  the 
other  way  by  several  judges,8  but  neither  of  them  showed 
what  authority  they  had  to  issue  an  injunction  against  a  person 
without  any  bill  being  filed  against  him  as  a  foundation  there- 
for. Courts  have  jurisdiction  in  patent  cases  to  issue  injunc- 
tions only  in  accordance  with  the  course  and  principles  of 
courts  of  equity; 7  and  it  is  not  generally  understood  that  those 
principles  allow  a  chancellor  from  whom  a  citizen  prays  an  in- 
junction against  A.  B.  to  respond  by  enjoining  the  complain- 


1  Sections  647     to     653    of    this  der  Felting  Co.  13  Blatch.  453, 1876. 

book.  8  Rumford     Chemical     Works    v. 

1  American  Cotton-Tie  Supply  Co.  Hecker,  11  Blatch.  556,  1874. 

v.  McCready,  17  Blatch.  291 ,  1879.  «  Birdsall  v.  Mfg.   Co.    1   Hughes, 

» Lowell    Mfg.    Co.    v.     Hartford  64,  1877 ;  Allis  v.  Stowell,   16  Fed. 

Carpet  Co.  2  Fisher,  472,  1864.  Rep.  788,  1883. 

4  Asbestos  Felting  Co.  v.  Salaman-  7  Revised  Statutes,  Section  4921. 


CHAP.   XXI.]  INJUNCTIONS.  479 

ant  not  to  sue  C.  D.  The  text  writer  cannot  see  how  Justice 
BLATCHFORD'S  very  cogent  argument  against  that  notion,  can 
be  logically  met  by  the  judges  who  have  favored  that  view. 

§  706.  The  duration  of  injunctions  in  patent  cases  depends 
upon  a  variety  of  circumstances.  Unless  such  a  writ  is  ex- 
pressly made  to  apply  to  the  use  or  sale,  after  the  expiration 
of  the  patent,  of  specimens  of  the  patented  thing  which  were 
made  before  that  time,  such  injunction  cannot  continue  after 
that  expiration.  Permanent  injunctions  are  sometimes  called 
perpetual  injunctions,  but  in  patent  cases  that  would  be  a  mis- 
nomer, for  no  injunction  can  stand  longer  than  the  right  upon 
which  it  is  based,  and  patent  rights  are  never  perpetual. 

§  707.  And  the  duration  of  an  injunction  sometimes  de- 
pends upon  whether  it  was  issued  by  a  circuit  court  in  term 
time,  or  by  one  of  the  judges  in  vacation.  The  statutes  draw 
a  plain  distinction  between  a  circuit  court  and  a  judge  thereof. 
When  a  circuit  court  is  in  session  during  one  of  its  terms,  its 
jurisdiction  is  the  same  whether  it  is  held  by  the  circuit  jus- 
tice allotted  to  the  circuit,  or  by  the  circuit  judge  of  the  cir- 
cuit, or  by  the  district  judge  of  the  district,  or  by  any  two  or 
more  of  them  sitting  together,  or  by  the  circuit  judge  of  some 
other  circuit,  or  by  the  district  judge  of  some  other  district, 
holding  the  court  in  a  special  emergency.1  As  to  the  dura- 
tion of  injunctions  issued  by  circuit  courts  so  held,  the  rules 
stated  in  the  last  section  uniformly  apply.  But  it  often  hap- 
pens that  injunctions  become  necessary  during  the  time  which 
elapses  after  the  adjournment  of  one  term  of  the  circuit  court 
in  a  particular  district,  and  before  the  beginning  of  the  next 
term  of  the  same  court.  In  such  a  case,  an  injunction  may 
be  granted  by  the  circuit  justice  allotted  to  that  circuit,  or  by 
the  circuit  judge  of  that  circuit,  or  by  the  district  judge  of 
that  district,  under  the  following  circumstances  respectively, 
and  with  the  respective  durations  about  to  be  mentioned. 
The  circuit  justice  or  the  circuit  judge  may  sit  at  any  time  at 


1  Revised  Statutes,   Sections  609,       Co.  v.  Folsom,  5  Bann.  &  Aid.  591, 
617,  618,  591,  592,  593,  594,  595,  596,       1880. 
and  611  ;  Goodyear  Dental  Vulcanite 


480  INJUNCTIONS.  [CHAP.  xxi. 

any  place  within  his  circuit,  to  grant  an  injunction  in  any 
proper  case  pending  in  the  circuit  court  of  any  district  in  that 
circuit  ;  and  the  circuit  justice  may  so  sit,  at  any  other  place 
in  the  United  States,  whenever  the  motion  cannot  be  heard 
by  the  circuit  judge  of  the  circuit,  or  by  the  district  judge  of 
the  district,  whether  the  inability  of  the  local  judges  arose 
from  absence  from  their  respective  jurisdictions,  or  from  any 
other  cause  ; '  and  an  injunction,  when  so  granted,  will  have 
the  same  duration  as  if  granted  by  the  circuit  court  for  the 
district.5  The  district  judge  of  any  district  may  sit  at  any 
time,  at  any  place  within  his  district,  to  grant  an  injunction 
in  any  proper  case  pending  in  the  circuit  court  of  that  district, 
provided  the  mover  did  not  have  a  reasonable  time  to  apply 
to  the  circuit  court  for  the  writ  ;  but  such  an  injunction  will 
not  continue  in  force  after  the  beginning  of  the  next  term  of 
the  circuit  court,  unless  the  court,  when  it  sits,  makes  an  order 
to  that  effect.8  If  the  next  term  of  the  circuit  court  is  held 
by  some  other  judge  than  the  district  judge  who  granted  the 
injunction,  the  approval  of  the  injunction,  by  the  judge  so 
holding  court,  will  therefore  be  necessary  to  its  continued 
vitality  ;  but  if  the  next  term  happens  to  be  held  by  the  dis- 
trict judge  who  issued  the  writ,  his  order  continuing  it  in 
force  will  be  equally  efficacious.  In  either  event,  orders  to 
continue  injunctions  issued  by  district  judges  in  vacation,  have 
become  so  much  a  matter  of  form,  that  they  are  seldom  actu- 
ally asked  for  or  entered.  But  the  formality  ought  to  be  re- 
vived and  followed,  because  in  its  absence  no  attachment  can 
lie  against  one  who  disregards  such  an  injunction  after  the 
beginning  of  the  ensuing  term  of  the  circuit  court.4  Indeed 
it  is  probable  that  many  a  defendant  supposes  himself  at  this 
moment  to  be  under  a  valid  injunction  not  to  infringe  a  par- 
ticular patent,  when  in  fact  that  injunction  long  ago  expired 
because  it  was  granted  by  a  district  judge  in  vacation,  and  was 

1  Revised  Statutes,    Section  719  ;  3  Revised  Statutes,  Section  719. 

Searls  v.    Railroad    Co.    2    Woods,  4  Parker  v.  The  Judges,  12  Whea- 

622,  1873.  ton,  564,  1827  ;  Gray  v.  Railroad  Co. 

*  Gray  v.  Railroad   Co.    1   Wool-  1  Woolworth,  63,  1864. 
worth,  68,  1864. 


CHAP.   XXI.]  INJUNCTIONS.  481 

never  ordered  to  continue  in  force  by  the  circuit  court  in  term 
time. 

§  708.  An  attachment  will  issue  to  bring  an  enjoined  de- 
fendant before  the  court  for  punishment,  whenever  the  com- 
plainant institutes  proper  proceedings  therefor,  and  proves 
that  the  defendant  was  promptly '  served  with  a  writ  of  in- 
i unction,  and  that  the  writ  contained  a  concise  description  of 
the  particular  thing,  all  specimens  of  which  it  forbade  the  de- 
fendant to  make,  use,  or  sell,"  and  that  the  defendant  did  make, 
or  use,  or  sell  a  specimen  of  that  thing,  or  of  a  thing  clearly 
the  same,  after  having  been  served  with  that  writ.3  Where 
the  defendant  is  a  corporation,  and  where  the  officer  of  that 
corporation  upon  whom  the  writ  was  served,  was  privy  to  its 
violation,  an  attachment  will  issue  against  him  in  person  ;  * 
and  indeed  an  injunction  duly  served  on  a  corporation  is  bind- 
ing on  all  persons  acting  for  that  corporation,  and  who  have 
notice  of  the  writ  and  of  its  contents,  whether  they  were  actu- 
ally served  or  not.*  Where  the  thing  proven  to  have  been 
made,  used,  or  sold  by  the  enjoined  defendant  differs  from  the 
article  described  in  the  writ  of  injunction,  a  question  of  in- 
fringement arises.  If  that  question  is  a  doubtful  one,  the  at- 
tachment will  not  issue  ; '  because  doubtful  questions  will  not 
be  decided  on  summary  proceedings  to  commit  persons  for 
contempt  of  court.  But  not  every  question  is  doubtful  which 
is  difficult,  or  which  is  complex,  or  about  which  the  evidence 
is  conflicting.  It  is  therefore  the  duty  of  the  court,  on  a  hear- 
ing of  a  motion  for  an  attachment,  to  examine  what  the  de- 
fendant is  proved  to  have  done,  and  to  issue  an  attachment  if 
his  doings  satisfactorily  appear  in  the  eye  of  the  law  to  consti- 

1  McCormick  v.  Jerome,  3  Blatch.       Ard.  105,  1874. 

486,  1856.  •  Phillips   v.   Detroit,  3  Bann.  & 

2  Whipple     v.       Hutchinson,     4      Ard.  150,  1877. 

Blatch.  191,  1875.  •  Liddle  v.  Cory,  7  Blatch.  1,  1866  ; 

3  Birdsall  v.   Mfg.  Co.  2  Bann.  <fe  Welling  v.  Trimming  Co.  2  Bann.  & 
Ard.  519,  1877  ;   Allis  v.  Stowell,  19  Ard.    1,  1875  ;  Buerk  v.  Imhaeuser, 
Off.   Gaz.  727,  1881  ;  Atlantic  Giant  2  Bann.  &  Ard.  465,  1876  ;   Onder- 
Powder  Co.  v.  Dittmar  Powder  Mfg.  donk  v.  Fanning,   5  Bann.   &  Ard. 
Co.  9.  Fed.  Kep.  316,  1881.  431,  1880  ;   Bate  Refrigerating  Co. 

4  Wetherill  v.  Zinc  Co.  1  Bann.  &  v.  Eastman,  11  Fed.  Eep.  902,  188L 


482  INJUNCTIONS.  [CHAP.  xxi. 

tute  infringement  of  a  claim  covered  by  the  writ  of  injunc- 
tion. ' 

§  709.  It  is  no  defence  to  a  motion  for  an  attachment  to 
show  that  the  decision  in  pursuance  of  which  the  injunction 
was  granted  was  wrong  ; a  or  that  new  evidence  has  since  been 
discovered  which,  if  it  had  been  known  at  the  hearing,  would 
have  caused  a  contrary  decision  ;  *  or  that  the  defendant  was 
advised  by  counsel  that  his  doings  did  not  violate  the  injunc- 
tion ; 4  or  that  what  the  defendant  did  was  done  as  the  em- 
ploye of  another  ; s  or  that  the  writ  of  injunction  was  for  a 
while  suspended  in  its  operation  by  the  consent  of  the  com- 
plainant without  any  order  of  court  ; 8  or  that  the  writ  of 
injunction  was  inadvertently  made  broader  than  the  decision 
of  the  court  would  warrant.7  In  such  a  case  as  the  last  of 
these,  the  defendant  may  apply  to  the  court  to  correct  the 
writ,  but  he  must  not  disobey  it  while  it  remains  unchanged. 
But  where  an  injunction  was  based  on  a  consent  decree,  which 
decree  was  entered  in  pursuance  of  a  compromise  of  the 
parties,  an  attachment  will  not  issue  for  a  disregard  of  that  in- 
junction, if  that  compromise  has  been  set  aside  by  a  court  of 
competent  jurisdiction,  or  if  such  a  court  has  enjoined  the 
complainant  from  enforcing  the  contract  of  compromise.* 

§  710.  The  penalty  for  a  violation  of  an  injunction  depends 
upon  the  circumstances  of  the  particular  case  at  bar.  Where 
it  appears  that  the  defendant  had  no  intention  to  disobey  the 
writ,  the  penalty  may  be  confined  to  an  enforced  payment  of 
the  costs  of  the  motion  for  an  attachment."  Where  the  dis- 
obedience is  less  excusable,  the  defendant  may  be  compelled  to 

1  WetherUl  v.  Zinc  Co.  1  Bann.  &  5  Sickles  v.  Borden,  4  Blatch.  15, 

Ard.  105,  1874  ;  Schillinger  v.  Gun-  1857  ;  Goodyear  v.  Mullee.'S  Blatch. 

ther,  2  Bann.  &  Ard.  545,  1877.  437,  1867  ;  Potter  v.  Muller,  1  Bond, 

*  Woodworth  v.  Rogers,  3  Wood-  601,  1865. 

bury  &  Minot,  135  ;   Liddle  v,  Cory,  •  Pentlarge  v.  Beeston,  1  Fed.  Rep. 

7  Blatch.  1.  862,  1880. 

3  Whipple  v.  Hutchinson,  4  Blatch.  '  Sickles  v.  Borden,  4  Blatch.  15, 
190,    1858  ;    Phillips    v.    Detroit,  3  1857. 

Bann.  &  Ard.  150,  1877.  8  Pentlarge  v.  Beeston,  1  Fed.  Rep. 

4  Hamilton  v.  Simons,  5  Bissell,       862,  1880. 

77,  1869.  » Carsteadt     v.     Corset     Co.     13 


CHAP.  XXI.]  INJUNCTIONS.  483 

pay  all  the  expenses  and  counsel  fees  incurred  by  the  com- 
plainant in  relation  to  the  motion.1  Where  the  particular 
defendant  in  contempt  derived  no  benefit  from  his  disobedi- 
ence, the  penalty  should  not  extend  to  a  judgment  for  the 
damages  which  the  complainant  incurred  on  account  of  the 
violation.2  But  where  disobedience  of  an  injunction  is  ex- 
cuseless  and  defiant,  the  penalty  may  be  a  reasonable  fine  and 
a  reasonable  imprisonment. 

Blatch.    371,    1876  ;    Strobridge    v.  2  Bann.  &.  Ard.  545,  1877. 

Lindsay,  6  Fed.  Rep.  510,  1881.  s  Phillips  v.  Detroit,  3  Bann.   & 

1  Doubleday  v.  Sherman,  4  Fisher,  Ard.  155,  1877. 
253,  1870  ;   Schillinger  v.  Gunther, 


CHAPTER  XXII. 

PROFITS. 


711.  The  infringer' s  profits  recover- 
able in  equity. 

712.  In  cases  of  joint  infringement. 

713.  In  cases  of  infringement  partly 
unprofitable. 

714.  What  spaces  of  time  an  account 
of  profits  may  cover. 

715.  The  generic  rule  for  ascertain- 
ing infringer's  profits. 

716.  Complainant's  damages  no  cri- 
terion of  defendant's  profits. 

717.  Defendant's  profits  in  cases  of 
unlawfully  making  and  selling 
articles    covered    by  the  com- 
plainant' s  patent. 

718.  Method  of  ascertaining  cost  of 
making  and  selling  infringing 
articles. 

719.  Burden  of    proof    when  it  is 
necessary    to    separate    profits 
due  to  patented  features,  from 
profits  due  to  other  features,  of 
an  infringing  article. 

720.  Method  of  making  the  separa- 
tion where  defendant  made  and 
sold    the    patented     invention 
separately,  as  well  as  in  connec- 
tion with  other  things. 

721.  Method  where  defendant  pays 
royalty  for  right  to  make  and 
sell  the  features  not  covered  by 
the  patent  in  suit. 

722.  Cases  where  no  separation  is 
required  or  allowed. 

723.  Method  of  making  the  separa- 
tion by  the  criterion  of  com- 
parative cost. 


724.  Defendant's  profits  in  cases  of 
unlawfully  selling  articles  partly 
or  wholly  covered  by  complain- 
ant's patent. 

725.  Defendant's  profits  in  cases  of 
unlawful     using    of     patented 
processes  or  things,  ascertained 
by  the  rule  in  Mowry  v.  Whit- 
ney. 

726.  Standards    of     comparison  in 
respect  of  being  open  to  the 
public. 

727.  In  respect  of  being  adequate  to 
accomplish  an  equally  beneficial 
result. 

728.  Recoverable  profits  may  result 
from  affirmative  gains,  or  from 
saving  from  loss. 

729.  Affirmative  gain. 

730.  Saving  from  loss. 

731.  Affirmative    gain    and    saving 
from  loss. 

732.  Standards  of  comparison  need 
not  have  been  used  by  the  in- 
fringer. 

733.  A  standard  of  comparison  must 
have  been  known  at  the  time  of 
the  infringement,  but  need  not 
have  been  in  existence  at  any 
earlier  period. 

734.  Method  of  selecting  the  proper 
standard  of  comparison. 

735.  The  rule  in  Mowry  v.  Whitney 
has  no  application  to  cases  of 
infringement  by  making  or  by 
selling. 


CHAP.   XXII.] 


PROFITS. 


485 


736.  Questions  of    interest    on  in- 
fringers'  profits,    considered  in 
the  light  of  the  Supreme  Court 
precedents. 

737.  Considered  in  the  light  of  Cir- 
cuit Court  precedents. 

738.  Considered    in    the    light     of 
equitable   doctrines   and    prin- 
ciples. 

739.  Proceedings  before  masters. 

740.  Evidence  before  masters. 

741.  Objections  to   evidence  before 
masters. 

742.  Questions  of  the  extent  of  the 
defendant's  infringement. 


743.  Questions  relevant  to  different 
sorts  of  defendant's  alleged  in- 
fringement. 

744.  Master's  reports. 

745.  Exceptions  to  master's  report. 

746.  Defendant's       exceptions      to 
master's  reports. 

747.  Defendant's  affirmative  excep- 
tions to  master's  reports. 

748.  Defendant's    negative     excep- 
tions to  master's  reports. 

749.  Complainant's    exceptions    to 
master's  reports. 

750.  Outline  of  practice  relevant  to 
master's  findings. 


§  711.  THE  profits  which  are  recoverable  in  equity  for  the 
infringement  of  a  patent,  are  those  which  the  defendant  made 
from  that  infringement.1  They  are  the  profits  which  he  act- 
ually made  ;  not  those  which  with  reasonable  diligence  or  dif- 
ferent management  he  might  have  made."  Where  a  particular 
infringer  realized  no  profit  from  his  infringement  none  can 
be  recovered  from  him  ;  but  where  he  did  make  such  a  profit, 
it  can  be  recovered,  whether  the  general  business,  of  which 
the  infringement  formed  a  part,  was  profitable  to  him  or  not.* 
The  recoverable  profits  are  those  which  resulted  directly,  and 
do  not  include  any  which  resulted  indirectly,  from  the  infringe- 
ment.4 The  case  just  cited  is  an  excellent  example  of  this 
distinction.  The  difference  between  the  amount  of  money  for 
which  the  defendants  sold  their  preserved  fish,  and  the  aggre- 
gate cost  of  that  fish  and  of  preserving  it  by  the  patented 
apparatus,  was  there  held  to  be  direct  profit.  But  it  ap- 
peared that  the  defendants  were  also  dealers  in  fresh  fish,  and 
that  they  sold  a  large  amount  of  such  fish  at  higher  prices  than 
they  could  have  done,  had  they  not  reduced  the  supply  in  the 


1  Rubber  Co.  v.  Goodyear,  9  Wal- 
lace, 801,  1869. 

*  Livingston  v.  Woodworth,  15 
Howard,  546,  1853  ;  Dean  v.  Mason, 
20  Howard,  203,  1857  ;  Munson  v. 


New  York,  IB  Fed.  Rep.  560,  1883. 

3  Elizabeth   v.  Pavement    Co.   97 
U.  S.  138,  1877. 

4  Piper  v.   Brown,  1  Holmes,  198, 
1873. 


486  PROFITS.  [CHAP.  xxn. 

market  by  means  of  preserving  fish  in  the  patented  apparatus. 
The  increase  in  the  price  of  fresh  fish,  which  was  thus  caused 
by  the  defendants'  infringement,  was  one  and  one  half  cents 
per  pound  ;  and  the  consequent  profits  made  by  the  defend- 
ants amounted  to  more  than  six  thousand  dollars.  But  the 
court  held  that  those  profits  could  not  be  recovered  by  the 
patentee,  because  they  did  not  directly  result  from  the  in- 
fringement of  his  patent. 

§  712.  Where  several  defendants  were  joint  infringers  of  a 
patent,  but  where  all  the  resulting  profits  were  received  by 
part  of  the  wrong-doers,  the  decree  for  profits  will  be 
rendered  only  against  those  defendants  who  realized  them.1 
Where  all  of  the  defendants  realized  profit  during  a  portion 
of  the  time  covered  by  the  infringement  in  suit,  and  where  a 
part  of  them  realized  profits  during  the  residue  of  that  time, 
the  respective  profits  may  be  recovered  accordingly,  and  a 
decree  be  entered  against  all  of  the  defendants  for  the  profits 
in  which  all  participated,  and  against  a  part  of  the  defendants 
for  the  profits  which  that  part  alone  realized." 

§  713.  Where  a  part  of  the  infringement  of  a  defendant  re- 
sulted in  profits,  and  the  residue  resulted  in  losses,  the  com- 
plainant is  entitled  to  recover  those  profits  without  any  de- 
duction on  account  of  those  losses.8  Each  infringement  is 
treated  by  itself.  If  it  resulted  in  profit,  that  profit  belongs 
to  the  patentee.  If  it  resulted  in  loss,  that  loss  must  be  borne 
by  the  inf ringer.  It  cannot  be  set  off  against  the  patentee's 
right  of  action  for  the  profitable  infringement,  any  more  than 
it  could  be  made  the  basis  of  a  right  of  action  against  the  pat- 
entee if  no  infringement  had  been  profitable. 

§  714.  An  account  of  profits  is  not  confined  to  those  which 
.  arose  before  the  action  was  begun,  nor  indeed  to  those  which 
.  accrued  before  the  interlocutory  decree  was  entered  ;  but  may 
be  made  to  include  all  profits  realized  by  the  defendant  from 


1  Elizabeth   v.   Pavement    Co.   97  Ard.  402, 1878. 

U.  S.  140,  1877.  3  Graham  v.  Mason,  1  Holmes,  90, 

1  Tatham  v.  Lowber,  4  Blatch.  87,  1872  ;    Steam  Stone  Cutter   Co.  v. 

1867  ;   Herring  v.  Gage,  3  Bann.  &  Mfg.  Co.  17  Blatch.  27,  1879. 


CHAP.  XXII.]  PROFITS.  487 

infringing  the  complainant's  right,  at  any  time  prior  to  the 
closing  of  the  account.1 

o 

§  715.  The  generic  rule  for  ascertaining  the  amount  of  the 
profits  recoverable  in  equity  for  the  infringement  of  a  patent, 
is  that  of  treating  the  infringer  as  though  he  were  a  trustee 
for  the  patentee  in  respect  of  the  profits  which  he  realized 
from  his  infringement.11  The  specific  rules  by  means  of  which 
this  generic  rule  is  administered,  are  somewhat  numerous  and 
somewhat  elastic.  They  are  adapted  to  the  varying  natures 
of  patented  inventions  and  to  the  varying  circumstances  under 
which  the  patents  for  those  inventions  are  respectively  in- 
fringed.3 They  all  require  the  best  evidence,  of  which  the 
nature  of  each  particular  case  to  which  they  may  be  respect- 
ively applied  will  reasonably  admit ;  *  and  that  evidence  must 
be  reasonably  convincing.6 

§  716.  The  patentee's  royalty  is  no  measure  of  the  defend- 
ant's profits,"  even  in  a  case  where  the  patentee  habitually 
exercised  his  exclusive  right  by  granting  licenses  to  others/ 
Nor  are  any  other  facts  which  relate  to  the  measure  of  the 
complainant's  damages,  material  to  inquiries  touching  the 
amount  of  the  defendant's  profits.8 

§  717.  The  difference  between  the  amount  it  cost  the  de- 
fendant to  make  and  sell  his  specimens  of  the  patented  thing 
and  the  amount  which  he  received  for  those  specimens,  is  in 
many  cases  the  amount  of  his  profits.  That  is  the  fact  where 
the  only  infringement  consisted  of  such  making  and  selling, 
and  where  no  element  of  particular  proved  value,  other  than 
those  covered  by  the  patent  in  suit,  entered  into  the  composi- 
tion of  the  specimens  which  were  made  and  sold.*  In  the 

1  Rubber  Co.   v.  Goodyear,  9  Wai-  6  Fed.  Rep.  283,  1881. 
lace,  800,  1869  ;   Knox  v.   Quicksil-  8  Locomotive  Safety  Truck  Co.  u, 

ver  Mining  Co.  6  Sawyer,  435,  1878.  Railroad  Co.  2  Fed.  Rep.  681,  1880. 

5  Root   v.  Railway  Co.   105  U.  S.  •  Knox  v.   Mining  Co.   6  Sawyer. 

214,  1881  ;  Burdett  v.  Estey,  3  Fed.  430,  1878. 
Rep.  571,  1880.  '  Wooster   v.    Taylor,    14    Blatch, 

3  WetheriU  v.  Zinc  Co.  1  Bann.  &  403,  1878. 

Ard.  486,  1874.  8  Elizabeth  v.  Pavement  Co.  97  IT. 

4  Herring  v.  Gage,  3  Bann.  &  Ard.       8.  143,  1877. 

399,   1878  ;   Emigh  v.  Railroad  Co.  »  Rubber  Co.  v.  Goodyear,  9  Wai- 


488  PROFITS.  [CHAP.  XXIL 

first  case  just  cited,  it  appears  that  the  patent  did  not  cover  all 
the  elements  of  the  articles  of  merchandise  which  were  made 
and  sold  by  the  defendant.  But  those  unpatented  elements 
were  disregarded  in  that  case,  because  the  conduct  of  the  de- 
fendant had  rendered  impossible  a  separate  account  of  the 
profits  due  to  the  patented  and  those  due  to  the  unpatented 
features  of  those  articles.  In  the  second  of  the  cited  cases,  it 
appeared  that  the  pavement  which  was  made  by  the  New 
Jersey  Wood  Paving  Co.  for  the  city  of  Elizabeth,  contained 
the  entire  invention  of  the  complainant,  and  contained  an  ad- 
dition thereto,  which  addition  might  or  might  not  have  con- 
tributed to  the  profit  which  resulted  to  the  Paving  Co.  from 
its  contract.  Under  those  circumstances,  the  Supreme  Court 
held  that  the  entire  profit  should  go  to  the  patentee,  because 
the  defendant  did  not  prove  how  much  was  due  to  the  addi- 
tional element.  The  principle  of  both  these  precedents  on 
this  point  appears  to  be  that  where  a  defendant  mingled  prof- 
its which  he  made  as  an  infringer,  with  those  he  made  other- 
wise, he  must  furnish  the  evidence  by  means  of  which  they 
can  be  separated,  or  must  submit  to  the  recovery  of  the  whole. 
In  the  third  case,  the  right  which  was  infringed  was  an  ex- 
clusive right  to  make  and  sell  Wood  worth  planing-machines. 
The  defendant  unlawfully  made  and  sold  such  machines,  but 
used  none,  and  he  was  held  liable  for  the  manufacturer's 
profit :  that  is  to  say,  for  the  amount  for  which  he  sold  the 
machines,  minus  what  it  cost  him  to  make  them. 

§  718.  When  taking  an  account  of  profits  in  the  method  in- 
dicated in  the  last  section,  it  is  generally  easy  to  ascertain  the 
amount  which  the  defendant  realized  for  the  articles  which  he 
made  and  sold  ;  but  it  is  generally  difficult  to  determine  how 
much  it  cost  him  to  make  and  sell  them.  One  such  inquiry 
occupied  ex-Chancellor  Walworth  as  master,  more  than  ten 
years,  and  occupied  the  judge  who  passed  upon  the  exceptions 
to  his  report,  at  least  as  many  weeks.1  When  such  accounts 

lace,  803,  1869  ;   Elizabeth  v.  Pave-       1857. 

ment  Co.  97  U.  S.  141,  1877  ;  Jen-          '  Troy  Iron    &    Nail   Factory    u 

kins  v.   Greenwald,    1    Bond,    141,       Corning,  6  Blatch  328,  18C9. 


CHAP.  XXII.]  PROFITS.  489 

are  taken,  the  elements  which  are  allowed  to  enter  into  that 
cost  are  the  following  : 

1.  The  market  value  of  materials  on  hand  at  the  time  the 
infringement  began,  and    the  actual  cost  of  materials  subse- 
quently purchased,  but  not  the  market  value  of  the  latter  at 
the  time  they  were  used  in  infringing.' 

2.  Money  paid  in  good  faith  to  employes  engaged  in  mak- 
ing and  selling  the  infringing  articles,  even  where  those  em- 
ployes were  officers  or  stockholders  of  the  infringing  corpora- 
tion.* 

3.  Proper  remuneration  for    the  labor  of  the  infringer  in 
conducting  the  infringement.     This  element  has  been  disal- 
lowed in  one  case  ; 3  but  the  same  reasoning  which  justified 
the  Supreme  Court  in  allowing  the  members  of  a  defendant 
corporation  for  their  personal  services,  calls  for  the  same  al- 
lowance where  the  men  who  infringe  do  so  as  partners  or  as 
individuals.      Where  a  number  of  men  form  a  corporation  and, 
as  such,  infringe  a  patent  by  making  and  selling  specimens  of 
a  patented  thing,  the  Supreme  Court  approves  a  proper  allow- 
ance for  their  labor  being  made  an  element  in  the  cost  of  those 
specimens,  when  those  men  are  forced  to  pay  over  those  prof- 
its to  the  patentee.     There  is  the  same  reason  for  making  the 
same  allowance,  where  two  such  men  make  and  sell  such  speci- 
mens as  partners,  or  where  one  man  does  so  alone. 

4.  Interest  on  borrowed  money,  but  not  interest  on  capital 
stock.4     The  same  reasons  which  deny  an  allowance  of  inter- 
est on  the  capital  stock  of  an  infringing  corporation,  will  deny 
an  allowance  of  interest  on  the  capital  of  an  individual  which 
is  invested  in  a  factory,  and  is  used  as  a  means  of  unlawfully 
making  specimens  of  a  patented  article.      It  would  follow 
from  Rubber  Co.  v.   Goodyear  that  the  two  decisions  which 
have  been  made  on  the  circuit  allowing  such  items,  either  in 

1  Rubber  Co.  v.  Goodyear,  9  Wai-  Stone    Cutter  Co.   v.    Mfg.    Co.    17 

lace,  803,  1869.  Blatch.  29,  1879. 

•  Rubber  Co.  v.  Goodyear,  9  Wai-  3  Williams  v.  Leonard,  9  Blatch. 

lace,  803,   1869  ;    American  Nichol-  476,  1872. 

Hon    Pavement  Co.    11    Elizabeth,  1  *  Rubber  Co.  v.  Goodyear,  9  Wai- 

Bann.    &    Ard.    442,    A874  ;     Steam  lace,  804,  1869. 


490  PROFITS.      .  [CHAP.  xxn. 

the  form  of  interest  on  capital,1  or  in  the  form  of  rent  of  shop 
and  fixtures,5  were  wrong  in  principle.  But  it  must  be  ad- 
mitted that  the  reasoning  of  these  circuit  court  decisions  is 
more  convincing,  on  this  point,  than  that  of  the  Supreme 
Court  case  ;  and  that  the  latter  decision  seems  hardly  consist- 
ent with  itself,  for  it  is  difficult  and  perhaps  impossible  to  see 
why  interest  should  be  allowed  on  borrowed  capital,  and  not 
allowed  on  capital  owned  by  the  infringer.  Indeed  the  princi- 
ple of  the  case  of  Rubber  Co.  v.  Goodyear,  on  this  point, 
seems  to  have  been  overruled  by  the  Supreme  Court  in  the 
case  of  Manufacturing  Co.  v.  Cowing.3  In  that  case  the 
court  criticised  and  modified  a  master's  report  because  it  did 
not  allow  for  the  use  of  tools,  machinery,  power,  and  other 
facilities  employed  in  the  manufacture  of  the  infringing 
articles.  Now  those  agencies  were  but  the  tangible  things  in 
which  the  capital  of  the  defendant  corporation  was  invested, 
and  to  allow  for  their  use  was  really  to  allow  interest  or  its 
equivalent,  on  that  capital. 

5.  Expenses  of  selling,  including  advertising.4 
§  719.  Where  the  thing  made  and  sold  by  the  defendant 
contained  not  only  the  invention  of  the  complainant,  but  con- 
tained also  some  other  patented  or  unpatented  invention,  or 
some  useful  feature  not  an  invention,  the  defendant,  by  prov- 
ing how  much  of  his  profit  was  due  to  other  features  than 
those  covered  by  the  patent  in  suit,  may  confine  the  recovery 
to  the  residue  of  those  profits.5  The  cases  just  cited  indicate 
that  the  burden  of  proof  in  this  matter  is  on  the  defendant ; 
whereas  several  circuit  court  cases  hold  that  burden  to  rest  on 
the  complainant."  But  this  line  of  precedents  sprang  from  a 

1  Troy  Iron    &  Nail    Factory    v.  1877. 

Corning,  6  Blatch.  354,  1869.  5  Rubber  Co.  v.  Goodyear,  9  Wal- 

9  Steam  Stone  Cutter  Co.  v.  Mfg.  lace,  804,  1869  ;   Elizabeth  v.  Pave- 

Co.  17  Blatch.  28,  1879.  ment  Co.  97  U.  S.  141,  1877. 

3  Manufacturing    Co.    v.  Cowing,  •  Goulds  Mfg.  Co.  v.  Cowing,  12 
105,  U.  S.  257,  1881.  Blatch.  243, 1874  ;  Black  v.  Munson, 

4  Rubber  Co.  v.  Goodyear,  9  Wai-  14  Blatch.    265,  1877  ;   Garretson  r. 
lace,  804,  1869  ;    Manufacturing  Co.  Clark,  15  Blatch.  70,  1878  ;    Schil- 
v.  Cowing,  105  U.  S.  257,  1881  ;   La  linger  v.   Gunther,  15  Blatch.    303, 
Baw  v.  Hawkins,  2  Bann.  &  Ard.  566,  1878  ;   Star  Salt  Caster  Co.  v.  Cross- 


CIIAI'.   XXII.]  PROFITS.  491 

misapprehension  of  the  case  of  Blake  v.  Robertson.1  The 
damages  incurred  by  the  complainant  constituted  the  matter 
of  inquiry  on  that  accounting,  and  as  no  proper  evidence 
was  introduced  on  that  point,  nominal  damages  only  were 
awarded  by  the  Supreme  Court.  The  profits  spoken  of  in 
that  case  were  those  made  by  the  complainant  ;  not  those  real- 
ized by  the  defendant.  Where  the  first  of  these  constitute 
the  subject  of  inquiry,  it  may  well  be  held  that  the  burden  is 
on  him  who  realized  them,  to  separate  them  into  their  constit- 
uent elements.  But  where  the  defendant's  infringing  profits 
are  the  point  of  investigation,  and  where  he  has  mingled  them 
with  profits  legitimately  his  own,  the  burden  is  on  him  to 
show  the  amount  of  the  latter  ;  because  he,  and  not  the  in- 
jured party,  ought  to  be  called  upon  to  separate  what  he  has 
confused.  In  performing  such  a  duty,  defendants  should 
proceed  according  to  the  following  rules. 

§  720.  Where  the  defendant  made  and  sold  the  complain- 
ant's invention  separately,  as  well  as  in  connection  with  other 
inventions,  the  profit  which  he  made  on  the  separate  sales  is 
the  measure  of  that  part  which  is  to  be  credited  to  the  com- 
plainant's invention,  of  the  profit  which  the  defendant  made 
on  the  joint  sales.3  This  is  a  fairer  method  of  division  in 
such  a  case  than  would  be  a  division  of  the  gross  profits  in 
proportion  of  the  comparative  cost  of  the  elements  covered  by 
the  patent  in  suit,  and  those  not  so  covered  ;  because  the  com- 
parative cost  is  not  often  the  best  evidence  of  the  comparative 
utility  of  two  devices,  nor  of  the  comparative  profit  at  which 
they  can  be  made  and  sold.3 

§  721.  Where  the  defendant  has  paid  or  contracted  to  pay 
other  patentees  a  royalty  for  that  part  of  the  thing  made  and 
sold  by  him  which  is  not  covered  by  the  complainant's  patent, 
that  royalty  may  be  taken  as  the  measure  of  that  part  of  the 
gross  profits  due  to  that  part  of  the  article  in  suit.4  But  it 

man,   4  Bann.    &  Ard.   567,    1879  ;  *  Mason  v.   Graham,   23  Wallace, 

Kirby  v.    Armstrong,    19   Off.    Gaz.  276,  1874. 

661,  1881.  s  Graham  v.  Mason,  1  Holmes,  89, 

1  Blake  u.  Robertson,  94  U.  8.  733,  1872. 

1876.  <  Elizabeth   v.  Pavement   Go.    97 


492  PROFITS.  [CHAP.  xxn. 

seems  that  this  rule  is  not  to  be  applied  in  any  case  where  the 
division  of  the  profits  can  be  made  under  the  rule  of  the  last 
section  ;  because  it  may  sometimes  be  that  the  profits  due  to 
that  part  of  the  infringing  thing  which  is  not  covered  by  the 
complainant's  patent,  are  larger  than  the  royalty  which  the 
defendant  had  to  pay  for  the  right  to  make  and  sell  that 
part. 

§  722.  Where  the  thing  made  and  sold  by  the  defendant 
would  be  useless  for  its  special  purpose  without  the  part 
covered  by  the  complainant's  patent  ;  and  where  no  other 
known  article  would  answer  that  purpose  well  enough  to  find 
purchasers,  all  the  profits  which  the  infringer  derived  from 
making  and  selling  the  entire  thing  are  clearly  due  to  the 
patented  part,  and  are  therefore  recoverable  by  the  complain- 
ant.1 

§  723.  Where  the  profits  due  to  the  infringing,  and  those 
due  to  the  non-infringing,  elements  of  a  defendant's  article  of 
manufacture  and  sale,  cannot  be  separated  by  any  other  rule  ; 
then  the  apportionment  may  be  made  by  dividing  the  aggre- 
gate profits  in  proportion  of  the  respective  cost  of  the  differ- 
ent parts.  This  method  of  making  the  division  is  based  on 
the  presumption  that  similar  articles  of  merchandise  are  sold 
at  a  like  percentage  of  profit  on  the  cost  of  producing  them. 
But  this  is  not  likely  to  be  the  fact  where  one  of  those  articles 
is  covered  by  a  patent  while  the  others  are  not  so  covered, 
because  monopolies  tend  to  enhance  prices.  This  method  of 
making  the  required  division  will  therefore  always  be  more 
favorable  to  the  defendant  than  to  the  complainant,  where  no 
part  of  the  article  made  and  sold  by  the  former  is  covered  by 
a  patent,  except  the  part  which  is  covered  by  the  patent  of 
the  latter.  The  principle  of  this  method  was  approved  in 
Rubber  Co.  v.  Goodyear  ;  *  though  in  that  case  it  was  ap- 
plied to  the  work  of  dividing  profits  between  things  covered 
and  other  things  not  covered  by  the  complainant's  patent, 


U.  S.  141, 1877  ;  La  Baw  v.  Hawkins,       105  U.  S.  256,  1881. 
2  Bann.  &  Ard.  565,  1877.  *  Rubber  Co.  v.  Goodyear,  9  Wai- 

1  Manufacturing   Co.    v.    Cowing,        lace,  802,  1869. 


CHAP.  XXII.]  PROFITS.  493 

instead  of  between  parts  of  the  same  things  so  covered,  and 
other  parts  not  so  covered. 

§  724.  Where  the  infringement  consisted  only  in  selling 
specimens  of  the  article  covered  by  the  complainant's  patent, 
the  profits  may  be  readily  ascertained  by  deducting  the  cost 
of  purchasing  and  selling  the  articles  from  the  amount  received 
from  them  when  sold.  Where  the  subject-matter  of  the 
patent  is  a  part  of  a  larger  article,  and  where  a  separate  price 
is  paid,  and  a  separate  price  is  obtained  for  it,  the  gross  profit 
on  the  thing  covered  by  the  patent  may  be  ascertained  by  de- 
ducting the  former  from  the  latter.  But  in  such  a  case  the 
complainant  is  not  entitled  to  recover  the  whole  of  that  gross 
profit.  It  must  be  charged  with  such  a  proportion  of  the  ex- 
penses incurred  in  selling  the  entire  article,  as  the  aggregate 
money  received  from  the  infringing  device  bears  to  the  ag- 
gregate received  for  the  entire  apparatus  or  machine.1  The 
principle  of  this  rule  is  also  applicable  where  the  infringer 
made  the  articles  he  sold  instead  of  buying  them  ;  and  the 
rules  applicable  to  the  latter  class  of  cases,  and  heretofore  set 
forth  are  applicable,  with  some  reasonable  modifications,  to 
cases  where  the  infringer  bought  the  infringing  articles  which 
he  sold,  instead  of  making  them  himself. 

§  725.  Where  unlawful  using  of  a  patented  article  or 
process  constitutes  the  infringement  involved  in  an  action  in 
equity,  the  infringer's  profits  are  ascertained  by  a  rule  quite 
different  from  either  of  the  foregoing.  It  is  known  as  the 
rule  in  Mowry  v.  Whitney  ;  *  though  in  that  case  it  is  formu- 
lated according  to  the  special  circumstances  at  bar,  rather  than 
in  the  more  general  terms  which  express  its  principle  in  gen- 
eral application.  The  exact  language  used  by  the  Supreme 
Court  was  as  follows  :  "  The  question  to  be  determined  in  this 
case  is,  what  advantage  did  the  defendant  derive  from  using 
the  complainant's  invention,  over  what  he  had  in  using  other 
processes,  then  open  to  the  public,  and  adequate  to  enable  him 
to  obtain  an  equally  beneficial  result.  The  fruits  of  that  ad- 

1  The  Tremolo  Patent,  23  Wallace,  *  Mowry  v.  Whitney,  H  Wallace, 

528,  1874.  651,  1871. 


494:  PROFITS.  [CHAP,  xxn, 

vantage  are  his  profits."  This  statement  has  two  qualifica- 
tions which  were  suitable  enough  to  the  case  at  bar,  but  which 
do  not  appear  to  belong  to  the  underlying  principle  of  the  rule. 
These  are,  that  the  standard  of  comparison  must  have  been 
open  to  the  public  at  the  time  of  the  infringement,  and  must 
have  been  adequate  to  enable  the  defendant  to  obtain  a  result 
equally  beneficial  with  that  of  the  patented  invention. 

§  726.  The  first  of  these  qualifications  is  not  generally  ap- 
plicable to  the  rule,  because  the  profits  derived  from  the  use 
of  a  patented  invention  depend  upon  its  utility  and  cheapness 
as  compared  with  other  inventions  for  performing  the  same 
function  ;  and  that  comparative  cheapness  and  utility  does  not 
wholly  depend  upon  whether  those  other  inventions  were  given 
to  the  public,  or  were  patented  by  those  who  invented  them,  or 
if  the  latter,  upon  whether  those  patents  had  expired  at  the  time 
in  question.  If  the  invention  which  was  next  best  to  that  of 
the  complainant  was  patented  at  the  time  of  the  infringement, 
and  if  the  defendant  had  a  license  to  use  it,  but  instead  of 
doing  so,  used  that  of  the  complainant  ;  it  is  clear  that  the 
advantage  he  derived  from  his  infringement  is  nearly 
measured  by  the  difference  between  the  respective  utility  of 
the  two  inventions.  So,  also,  if  he  did  not  have  a  license  to 
use  the  next  best  invention,  but  could  have  purchased  one  had 
he  desired,  then  it  is  clear  that  the  advantage  he  derived 
from  his  infringement  is  measured  by  the  difference  between 
the  utility  of  the  two  inventions,  plus  whatever  amount  such 
a  license  would  have  cost.  And  if  the  defendant  neither  pos- 
sessed nor  could  have  purchased  a  license  to  use  the  next  best 
invention,  it  is  obvious  that  the  advantage  which  he  derived 
from  his  infringement,  is  measured  by  the  difference  between 
the  utility  of  the  two  inventions,  plus  the  money  recovery 
which  could  have  been  obtained  against  him  if  he  had  used 
the  next  best  invention  without  a  license.  If  the  patent  cover- 
ing the  next  best  invention  was  in  such  a  state  that  its 
owner  could  have  enjoined  the  infringer  from  using  it,  then 
the  infringer  could  have  derived  no  benefit  from  its  use,  and 
it  falls,  for  that  reason,  outside  of  the  general  rule.  Thus  this 
paragraph  seems  to  show  that  there  is  no  just  necessity  for  the 


CHAP.  XXII.]  PKOFIT8.  495 

first  qualification  in  the  special  statement  being  applied  to  the 
general  doctrine  ;  and  the  next  paragraph  explains  how  such 
a  qualification  would  often  be  affirmatively  unjust. 

Where,  for  example,  A.  B.  has  a  patent  for  one  apparatus, 
and  where  C.  D.  has  a  junior  patent  for  another  combination 
performing  the  same  function,  and  infringing  A.  B.  's  patent  ; 
and  where  E.  F.,  who  has  used  C.  D.'s  apparatus,  is  sued 
in  equity  by  him,  and  compelled  to  account  for  infringer's 
profits,  the  infringer  ought  to  be  permitted  to  set  up  the 
apparatus  of  A.  B.  as  a  standard  of  comparison  ;  for  otherwise 
he  will  be  compelled  to  pay  over  to  C.  D.  the  entire  fruits  of 
certain  advantages,  and  still  remain  liable  to  A.  B.  for  a 
portion  of  those  fruits.  Accordingly,  in  the  case  of  Emigh 
v.  Railroad  Co.,1  the  defendant  was  permitted  to  set  up  a 
standard  of  comparison  which  was  the  subject  of  letters  patent 
during  the  time  of  the  infringement  in  suit,  even  though  the 
defendant  never  had  any  license  to  use  the  invention  thus 
allowed  to  be  set  up.  These  facts  about  the  Hodge  brake, 
which  was  the  standard  of  comparison  in  that  case,  do  not 
appear  in  the  opinion  of  the  judges,  but  they  do  appear  in-  the 
records  of  the  court. 

§  727.  The  second  of  the  qualifications  mentioned  in  Sec- 
tion 725  is  not  generally  applicable  to  the  doctrine  of  the  rule 
in  Mowry  v.  Whitney  ;  because  the  difference  between  the 
utility  of  two  inventions  may  arise  from  the  fact  that  one  per- 
forms the  function  common  to  both,  with  equal  cheapness  and 
greater  excellence,  or  with  greater  cheapness  and  greater  ex- 
cellence, as  well  as  from  the  fact  that  it  performs  that  func- 
tion with  greater  cheapness  and  equal  excellence.  The  last  of 
these  sorts  of  superiority  characterized  the  invention  covered 
by  the  patent  sued  upon  in  Mowry  v.  Whitney  ;  but  the 
principle  of  the  rule  in  that  case  is  equally  applicable  to  cases 
where  the  first  or  the  second  sort  of  superiority  is  possessed  by 
the  invention  in  suit,  as  compared  with  the  prior  invention  set 
up  as  a  standard  of  comparison. 

§  728.  It  appears  from  the  foregoing  three  sections  that  the 

1  Emigh  i'.  Railroad  Co.  6  Fed.  Rep.  283,  1881. 


496  PROFITS.  [CHAP     XXII. 

general  principle  involved  in  the  rule  of  Mowry  v.  Whitney 
may  be  fully  stated  in  the  following  form.  The  fruits  of  the 
advantage  which  the  defendant  derived  from  using  the  com- 
plainant's invention,  over  what  he  could  have  derived  from 
using  any  other  process  or  thing  then  in  existence,  constitute 
the  profits  which  the  complainant  is  entitled  to  recover.  The 
advantage  referred  to  in  this  rule,  may  consist  either  in  an 
affirmative  gain,  or  in  a  saving  from  loss,  or  in  both  of  these 
elements  ;  and  the  fruits  of  that  advantage  constitute  the  re- 
coverable profits  in  either  event. 

§  729.  The  advantage  consists  in  an  affirmative  gain  in 
cases  wherein  the  patented  process  or  thing  produces  a  valu- 
able article  from  materials  which  otherwise  would  be  useless, 
or,  if  useful  at  all,  useful  only  for  purposes  of  inferior  value. 
The  Goodyear  process  patent,1  if  it  had  been  valid,  would 
have  been  a  patent  of  this  sort,  and  would  have  been  entitled 
to  an  account  of  profits  ascertained  according  to  the  rule  in 
Mowry  v.  Whitney.  But  as  the  only  patent  sustained  in  the 
Goodyear  case  was  the  patent  for  the  product,  and  inasmuch 
as  that  patent  was  infringed  by  the  defendant  only  in  making 
and  selling  specimens  of  the  invention  it  covered,  the  profits 
were  ascertained  on  an  entirely  different  plan. 

§  730.  But  the  advantage  consisted  in  saving  from  loss,  in 
most  of  the  cases  which  have  been  adjudicated  under  the  rule 
in  Mowry  v.  Whitney.  In  the  case  of  the  Cawood  patent/ 
the  saving  was  a  saving  of  labor  and  of  fuel  realized  from  the 
use  of  the  complainant's  swage-block  in  mending  the  exfoliat- 
ed ends  of  railroad  rails,  as  compared  with  the  labor  and  fuel 
it  would  have  been  necessary  to  expend  in  mending  those 
rails  upon  a  common  anvil.  In  Mevs  v.  Conover,'  the  saving 
was  a  saving  of  labor  in  splitting  kindling-wood,  by  means  of 
the  patented  machine  of  the  complainant,  as  compared  with 
the  labor  which  would  have  been  required  to  split  the  same 
quantity  of  wood  by  hand,  or  by  any  other  machine.  The 


1  Rubber  Co.  u.  Goodyear,  9  Wai-       1876. 

lace,  794,  1869.  »  Mevs  v.  Conover,    11   Off.   Gaz. 

*  Cawood  Patent,   94  U.    6.    709,       1111,  1876. 


CHAP,  xxn.]  PROFITS.  497 

decision  of  the  Supreme  Court  in  the  latter  case  was  never 
printed  in  the  United  States  Reports,  but  its  authenticity,  as 
contained  in  the  Official  Gazette  of  the  Patent  Office,  has  not 
been  questioned,  though  its  justice  has  sometimes  been  made  a 
subject  of  debate.  Those  who  have  denied  that  justice,  have 
said  that  there  was  no  actual  profit  made  by  the  in  f  ringer  in 
splitting  the  wood,  and  have  argued  that  he  would  not  have 
split  the  wood  at  all  if  he  had  been  obliged  to  do  so  otherwise 
than  by  the  patented  machine,  and  that  to  save  a  man  from  a 
loss  which  he  would  not  have  incurred  in  any  event,  is  not  to 
confer  a  profit  upon  him,  and  therefore  that  savings  ought  not 
to  be  accounted  as  profits  except  where  they  result  in  actual 
gains.  But  the  case  as  reported  from  the  circuit  court,1 
shows  that  the  defendant  did  continue  to  split  kindling-wood 
after  the  bringing  of  the  suit  caused  him  to  discontinue  the 
use  of  the  complainant's  invention  for  that  purpose.  It  was 
probably  necessary  for  him  to  do  so,  in  order  to  hold  his  cus- 
tomers for  other  kinds  of  fuel.  Therefore  the  case  is  not  a 
precedent  for  the  proposition  that  savings  are  profits,  where 
there  was  no  actual  profit  in  the  particular  business  in  which 
the  complainant's  invention  was  used,  and  where  there  is  na 
reason  why  the  defendant  should  have  pursued  that  business, 
if  obliged  to  do  so  at  a  positive  loss.  It  is  entirely  consistent 
with  the  principle  of  the  rule  in  Mowry  v.  Whitney  to  hold 
that  savings  are  profits  only  so  far  as  they  result  in  affirmative 
gains  from  the  particular  business  in  which  the  infringer  used 
the  patented  invention  ;  unless  that  particular  business  was  so 
necessary  to  the  general  business  of  the  infringer  that  he  could 
have  afforded  to  conduct  it  at  an  additional  loss  at  least  equal 
to  the  saving  he  made  from  the  use  of  the  complainant's  in- 
vention, and  therefore  presumably  would  have  conducted  it  at 
that  loss,  if  he  had  not  used  that  invention. 

But  it  is  undoubtedly  sufficient  for  a  complainant  to  prove 
the  amount  of  saving  which  the  defendant  derived  from  his 
infringement,  in  order  to  prima  facie  entitle  the  former  to  a 
decree  for  that  amount  as  infringer's  profits.  Then:  if  the  de- 

1  Conover  u.  Mers,  11  Blatch.  198,  1873, 


498  PROFITS.  [CHAP.  xxn. 

fendant  can  prove  that  those  savings  did  not  result  in  actual 
gain,  or  in  actual  gain  to  so  great  an  amount,  and  that  he 
would  not  have  attempted  to  do  the  work  of  the  patented 
process  or  thing  at  all,  by  any  other  means  than  it ;  those  facts 
will  entitle  him  to  an  acquittance  from  all  liability  for  profits 
in  excess  of  his  actual  gains. 

§  731.  The  advantage  referred  to  in  the  rule  in  Mowry  v. 
Whitney  consisted  both  in  affirmative  gains  and  in  savings 
from  loss  in  a  number  of  important  cases.  In  Tilghman  v. 
Mitchell,1  it  consisted  in  savings  of  lime,  sulphuric  acid,  and 
fat ;  and  in  gain  on  account  of  the  increased  value  of  the  glyc- 
erine obtainable  by  means  of  the  complainant's  invention,  as 
compared  with  that  obtainable  by  other  processes.  In  Weth- 
erill  -v.  Zinc  Co.,"  the  advantage  consisted  in  savings  of  coal 
and  labor,  in  reducing  zinc  ores  ;  and  in  gain  on  account  of 
the  increased  proportion  of  zinc  obtained  by  the  complainant's 
process  as  compared  with  other  processes  used  for  that  pur- 
pose. 

§  732.  The  standard  of  comparison  set  up  by  a  defendant 
needs  not  to  have  been  used  by  him  at  any  time  ;  *  and  where 
it  never  was  so  used,  the  evidence  of  its  utility,  as  compared 
with  the  invention  in  suit,  may  be  drawn  from  persons  who 
have  used  the  two  under  the  same  conditions  ;  *  or  from  any 
other  source  which  is  capable  of  furnishing  convincing  evi- 
dence  upon  the  point. 

§  733.  To  be  admissible  as  a  standard  of  comparison,  a 
process  or  thing  must  have  been  known  at  the  time  of  the  in- 
fringement." But  it  need  not  have  been  in  existence  at  any 
-earlier  period  ;  because  comparative  utility  and  cheapness,  and 
not  comparative  age,  at  the  time  of  the  infringement,  is  the 
test  of  the  savings  or  gains  which  result  therefrom.  If  A.  B. 
has  in  his  mill  two  substantially  different  machines  for  doing 
the  same  work,  one  of  which  is  an  infringement  of  a  patent, 

1  Tilghman  v.  Mitchell,  9  Blatch,  Eailroad  Co.  2  Fed.  Rep.  679,  1880. 
17,  1871.  4Emigh  v.  Eailroad  Co.  6  Fed. 

*  Wetherill  v.  Zinc  Co.  1.  Bann.  &       Rep.  283,  1881'. 

Ard.  486,  1874.  6  Knox  v.  Quicksilver  Mining  Co. 

-  Locomotive  Safety  Truck  Co.  v.       6  Sawyer,  436,  1878. 


CHAP,  xxn.]  PROFITS.  499 

and  the  other  of  which  was  invented  and  constructed  by  him 
after  the  date  of  that  patent  ;  and  if  he  uses  those  machines 
simultaneously,  with  equal  value  of  result,  but  with  difference 
in  cost  of  ten  dollars  per  day  in  favor  of  the  patented  machine, 
it  is  clear  that  his  saving  on  account  of  his  infringement 
amounts  to  ten  dollars  per  day,  plus  what  it  would  have  cost 
him  to  construct  a  duplicate  of  his  own  invention.  And  his 
saving  would  be  precisely  the  same,  if  his  own  invention  had 
been  produced  before  the  date  of  the  patented  invention  unlaw- 
fully used  by  him.  The  comparative  age  of  the  two  inven- 
tions, has  no  effect  whatever  upon  the  pecuniary  advantage 
which  he  realizes  from  the  one  which  he  uses  unlawfully.  This 
rule  would  of  course  annihilate  claims  for  savings,  if  the  com- 
parative cheapness  of  operating  the  two  machines  were  re- 
versed, and  if  the  ten  dollars  per  day  amounted  to  as  much  as 
it  would  cost  to  duplicate  the  infringer's  own  machine.  But 
in  such  a  case  the  patentee  would  still  have  his  remedy  for 
damages  ;  and  in  assessing  damages  the  criterion  would  be  his 
actual  royalty,  or  a  proper  royalty  fixed  by  the  court  or  jury 
for  the  purpose,  or  whatever  other  measure  of  damages  the 
patentee  might  be  able  to  prove  to  be  applicable  to  his  case. 
The  defendant's  savings  .or  lack  of  savings  would  have  no 
relevancy  whatever,  to  either  of  the  possible  criteria  to  which 
the  patentee  might  resort  in  this  behalf >  except  only  tho 
second  one  just  mentioned,  and  even  as  to  that  it  would  not  be 
conclusive.1 

§734.  To  determine  what  is  the  proper  standard  of  com- 
parison  in  a  particular  case,  it  is  not  necessary  for  the  com- 
plainant to  affirmatively  prove  that  a  particular  thing  was  ab- 
solutely the  next  best  thing  to  his  invention  at  the  time  of  the 
infringement.  Such  a  requirement  would  not  be  reasonable, 
because  it  could  never  be  performed.  It  would  involve  evi- 
dence enough  to  negative  the  existence  of  a  better  thing  than 
the  one  fixed  upon  ;  and  to  prove  that  no  better  thing  existed 
anywhere  would  obviously  be  impossible.  The  regular  course 
of  practice  on  the  point  is  for  the  complainant  to  select  what 

1  Sections  555,  556,  and  563  of  this  book. 


500  PEOFITS.  [CHAP.  xxn. 

appears  to  him  to  be  the  proper  standard  of  comparison,  and 
to  produce  evidence  to  prove  what  advantage  the  defendant 
derived  from  using  the  complainant's  invention  over  what  he 
could  have  derived  from  using  the  thing  so  selected.  Where 
the  defendant  knows  of  no  standard  of  comparison  more  favor- 
able to  himself  than  the  one  selected  by  the  complainant,  the 
only  remaining  issue  relates  to  the  utility  and  cheapness  of  that 
thing,  as  compared  with  the  complainant's  invention.1  Where 
the  defendant  is  not  satisfied  that  the  complainant  has  made 
the  proper  selection  of  a  standard  of  comparison,  he  may 
select  another,  and  may  produce  evidence  to  show  its  utility 
and  cheapness  as  compared  with  that  of  the  invention  covered 
by  the  patent  in  suit  ;  and  when  the  case  comes  to  a  hearing 
before  the  master,  the  first  question  to  be  decided  by  him  will 
be  as  to  which  of  the  parties  has  made  the  proper  selection. 
When  that  point  is  settled,  all  evidence  about  the  merits  of 
the  other  proposed  standard  will  become  and  remain  im- 
material to  the  case.  For  this  reason  it  is  always  best  for  the 
interest  of  a  party  to  make  the  proper  selection  if  he  can,  and 
it  is  never  judicious  to  make  one  which  cannot  be  sustained 
before  the  master  and  the  courts,  no  matter  how  favorable  it 
may  be  to  the  party  who  selects  it. 

The  true  standard  of  comparison  in  a  particular  case  is  that 
thing  which,  next  to  the  complainant's  invention,  could  have 
been  most  advantageously  used  by  the  defendant  in  place  of 
that  invention  at  the  time  he  used  the  latter.  To  determine 
this  point,  comparative  utility  is  the  primary  guide,  but  regard 
must  also  be  had  to  cheapness,  for  the  advantage  contemplated 
by  the  rule  in  Mowry  v.  Whitney  is  the  equalized  result  of 
these  two  elements.  The  cost  of  a  thing,  and  of  the  right  to 
use  it,  if  that  right  is  the  subject  of  a  patent,  must  be  taken 
into  account,  together  with  its  utility,  when  selecting  a  stand- 
ard of  comparison,  and  when  comparing  a  selected  standard, 
with  the  invention  unlawfully  used  by  the  defendant. 

§  735.  The  rule  in  Mowry  v.  Whitney  has  no  application 
to  any  of  those  cases  of  infringement  which  consist  in  making 

1  Emigh  v.  Eailroad  Co.  G  Fed.  Eep.  285,  1881. 


CHAP.  XXII.]  PROFITS.  *>Q\ 

and  selling  a  patented  article,  or  in  either  of  those  acts 
alone.  In  such  cases  the  infringer's  profits  are  ascertained  by 
quite  different  rules.1  In  Elizabeth  v.  Pavement  Co.,  the  in- 
fringement consisted  only  in  making  the  patented  pavement 
to  order  ;  that  is  to  say,  it  consisted  in  making  and  selling  the 
patented  article.  The  defendants  sought  to  have  the  profits 
determined,  under  the  rule  in  Howry  v.  Whitney,  by  setting 
up  other  pavements  as  standards  of  comparison  ;  but  the 
Supreme  Court  held  their  position  on  the  point  to  be  without 
foundation.11  The  rule  in  Mowry  v.  Whitney  was  also  unsuc- 
cessfully invoked  in  the  case  of  Burdett  v.  Estey,  though  the 
argument  in  favor  of  its  application  was  supported  by  evi- 
dence that  the  defendant  might  have  made  and  sold  a  different 
device  at  nearly  or  quite  the  same  profit  that  he  derived  from 
making  and  selling  the  device  covered  by  the  complainant's 
patent.3 

§  736.  The  questions  which  relate  to  interest  on  infringers' 
profits,  are  questions  which  still  await  a  comprehensive  answer. 
It  is  not  possible  to  reconcile  the  Supreme  and  Circuit  Court 
cases  which  relate  to  the  subject  ;  but  it  is  possible  to  show 
the  direction  in  which  the  ablest  of  those  decisions,  and  the 
principles  of  law  which  bear  upon  the  point,  seem  to  be 
tending. 

The  first  Supreme  Court  case  in  which  the  matter  was 
directly  treated  was  that  of  Silsby  v.  Foote.4  In  it  the  court 
below  allowed  interest  which  accrued  prior  to  the  final  decree, 
but  a  majority  of  the  Supreme  Court  was  of  opinion  that  there 
was  error  in  the  allowance,  and  the  item  was  accordingly 
ordered  to  be  deducted  from  the  account.  No  reasons  were 
assigned  by  the  majority  for  its  opinion,  nor  by  the  minority 
for  its  dissent.  A  judicial  decision  without  any  statement  of 
reasons  to  support  it,  is  of  course  binding  upon  the  parties  to 
the  litigation  in  which  it  is  rendered,  and  it  is  doubtless  citable 
as  a  precedent  as  far  as  it  can  be  supported  by  good  reasons 

1  Sections  717  to  724  of  this  book.  569,  1880. 

*  Elizabeth   u.    Pavement    Co.    97  *  Silsby  v.  Foote,  20  Howard,  386, 

U.  S.  141,  1877.  1857. 
''Burdett   u.  Estey,  3   Fed.   Eep. 


502  PROFITS.  [CHAP.  xxn. 

subsequently  suggested  in  its  behalf.  But  where  no  reasons  are 
given  by  the  judges,  and  none  are  apparent  to  the  bar,  such  a 
decision  ought  not  to  be  incorporated  into  the  law  ;  because  it 
may  have  been  based  on  considerations  which  were  peculiar  to 
the  case  in  hand  and  are  without  relevancy  to  the  general 
principle  involved  in  other  similar  cases. 

The  next  case  was  Mowry  v.  Whitney.1  Interest  before 
the  final  decree  was  disallowed  in  it,  for  the  assigned  reason 
that  profits  were  recoverable  and  were  recovered  merely  as 
the  measure  of  the  complainant's  damages ;  and  that  as 
damages  are  generally  unliquidated  till  settled  by  the  judg- 
ment of  a  court,  they  do  not  generally  draw  interest  till  so 
settled.  But  the  doctrine  which  constitutes  the  first  element 
of  this  reason  is  no  longer  the  accepted  view  of  the  Supreme 
Court  on  the  subject  to  which  it  relates.  The  present  rule  is 
that  infringers'  profits,  when  allowed,  are  given  as  a  substitute 
for  damages,  and  are  ascertained  and  treated  as  though  the  in- 
f ringer  were  a  trustee  of  the  patentee  in  respect  to  those 
profits.*  It  is  also  apparent  from  other  Supreme  Court  cases 
that  equity  does  not  decree  infringers'  profits,  on  any  such 
doctrine  as  that  they  are  really  damages  under  another  name. 
A  court  of  equity  may  indeed  assess  damages  in  addition  to 
profits,  under  the  present  statute  ; '  but  it  follows  the  law 
in  so  doing,  and  ascertains  them  by  means  of  the  legal  rules 
established  for  that  purpose.4  The  Supreme  Court  has  re- 
peatedly refused  to  measure  a  plaintiff's  damages  by  the  de- 
fendant's profits  in  actions  at  law  ; 6  and  therefore  courts  of 
equity  will  not  measure  those  damages  in  that  way.  Indeed, 
no  judge  can  logically  say  that  he  has  ascertained  a  complain- 
ant loss,  by  ascertaining  a  defendant's  gain  ;  for  there  are  no 
facts  which  can  operate  to  make  the  two  sums  coincide  in 
amount.  Moreover,  if  infringers'  profits  were  the  measure  of 


1  Mowry  v.   Whitney,  14  Wallace,  4  Chapter  XIX.  of  this  book. 

652,  1871.  &  Seymour  v.  McCormick,  16  How- 

*  Root  v.  Railway  Co.   105  U.  S.  ard,  480,  1853  ;  New  York  v.  Ransom, 

214,  1881.  23  Howard,  487,  1859  ;  Packet  Co.  v. 

•Revised  Statutes,  Section  4921  ;  Sickels,  19  Wallace,  611, 1873. 


CHAP.   XXII.]  PROFITS.  503 

patentees'  damages,  decrees  for  such  damages  would  go  against 
all  the  joint  infringers  in  a  case,  regardless  of  which  of  them 
appropriated  the  proceeds  of  their  joint  wrong-doing.1  But 
the  Supreme  Court  has  refused  to  approve  such  a  decree,  on 
the  express  ground  that  profits  and  not  damages  were  then  the 
only  subject  of  inquiry  and  recovery  in  equity.2  It  appears, 
therefore,  that  the  opinion  of  the  Supreme  Court  in  Mowry  v. 
Whitney,  upon  the  point  of  the  recoverahility  of  interest  on 
infringers'  profits,  cannot  stand  as  a  precedent,  now  that  the 
primary  element  of  its  foundation  has  been  denied  an  existence 
by  that  tribunal.  The  same  remark  applies  also  to  the  similar 
declarations  which  are  to  be  found  in  two  other  Supreme  Court 
cases. s 

§  737.  The  circuit  courts  have  usually  treated  the  subject  of 
interest  on  infringers'  profits  in  such  a  way  as  to  indicate  an 
opinion  that  the  earlier  holdings  of  the  Supreme  Court  on  that 
subject  were  not  likely  to  be  permanently  adhered  to  by  that 
tribunal.  Justice  NELSON,  who  delivered  the  opinion  in 
Silsby  v.  Foote,  was  evidently  opposed  to  its  disallowance  of 
interest,  for  he  had  very  lately  allowed  interest  which  accrued 
prior  to  a  final  decree  in  a  similar  case.4  Nor  did  he  feel 
bound  to  follow  the  decision  in  Silsby  v.  Foote,  even  after  it 
was  rendered,  for  he  subsequently  concurred  in  a  decree  for 
infringers'  profits  and  twenty  years'  accrued  interest  thereon.* 
So  also,  Justice  BLATCHFORD  afterward  rendered  a  decree  for 
such  interest  to  the  amount  of  more  than  sixty  thousand 
dollars,  computing  it  from  the  end  of  each  year  of  the  in- 
fringement, upon  the  profits  which  were  derived  during  that 
year.'  It  is  true  that  his  decree  was  reversed  by  the  Supreme 
Court,  but  it  was  reversed  on  the  question  of  infringement 
alone,'  and  the  Supreme  Court  afterward  unanimously  de- 

'  Cooley  on  Torts,  p.  135.  1857. 

*  Elizabeth   v.    Pavement   Co.    97  5  Troy  Iron   and   Nail  Factory  v. 
U.  S.  140,  1877.  Corning,  6  Blatch.  355,  1869. 

*  Littlefield  v.  Perry,  21  Wallace,  '  Tilghman  v.  Mitchell,  9  Blatch. 
229,  1874  ;  Parks  v.  Booth,  102  U.  S.  17,  1871. 

106,  1880.  i  Mitchell   v.   Tilghman,   19  Wai- 

4  Tatham  v.  Lowber,  4  Blatch.  87,       lace,  287,  1873. 


504  PROFITS.  [CHAP.  xxn. 

cided  that  its  own  decision  on  that  point  was  wrong.1  Even 
after  Mowry  -y.  Whitney  and  Littlefield  v.  Perry  were  decided 
by  the  Supreme  Court,  large  sums  of  interest  which  accrued 
on  infringers'  profits  prior  to  the  final  decrees,  were  allowed 
in  circuit  court  cases,  on  the  ground  that  the  defendants  ought 
to  pay  interest  on  their  profits  for  the  time  they  wrongfully 
detained  those  profits  from  their  true  owners." 

§  738.  The  primary  principle  involved  in  this  question  of 
interest,  is  that  equity  treats  an  infringer  as  though  he  were  a 
trustee  for  the  patentee  in  respect  of  the  inf ringer's  profits.' 
To  ascertain  how  equity  will  treat  an  infringer  in  respect  of 
interest  on  the  profits  which  he  derived  from  his  infringement, 
it  is  therefore  only  necessary  to  ascertain  how  it  treats  trustees 
in  respect  of  interest  on  trust  funds.  Chancellor  KENT  is  an 
excellent  authority  on  this  point.  He  held  that  where  trustees 
converted  property  of  the  cestuy  gue  trust  into  cash,  and 
mixed  that  cash  with  their  own  funds,  and  used  it  in  their  own 
business,  they  were  chargeable  with  legal  interest  thereon.* 
That  is  substantially  the  conduct  of  infringers  of  patents. 
They  convert  patented  property  into  cash  when  they  make  and 
sell,  or  sell,  or  use  specimens  of  patented  inventions  at  a  profit. 
That  cash  is  always  mixed  with  funds  of  the  infringer,  in  that 
when  received  by  him  it  is  always  a  part  of  a  larger  sum. 
Where  the  infringement  consists  in  making  and  selling,  that 
larger  sum  includes  the  cost  of  both  those  transactions  ;  and 
where  it  consists  in  selling,  that  larger  sum  includes  the  cost  of 
selling  and  of  buying  ;  and  where  the  infringement  consists  of 
using  only,  that  larger  sum  includes  the  profits  which  might 
have  been  derived  from  using  some  other  invention  in  exist- 
ence at  the  time  of  the  infringement.  So  also,  infringers 
regularly  use  in  their  own  business  the  profits  which  their  in- 
fringements bring  to  their  coffers.  Those  profits  may  some- 
times remain  with  other  funds  for  a  while  on  deposit  in  a 

1  Tilghman  v.  Proctor,  102  U.  S.  Rep.  571,  1880. 

707,  1880.  »  Boot  v.  Railway  Co.   105  U.  S. 

*  Steam  Stone  Cutter  Co.  v.  Wind-  214,  1881. 

sor   Manufacturing   Co.    17  Blatch.  *  Brown   v.    Rickets,  4  Johnson's 

24,  1879  ;  Burdett  v.  Estey,  3  Fed.  Chancery  (N.  Y.),  303,  1820. 


CHAP.  XXII.]  PROFITS.  505 

bank,  but  even  that  is  a  use  of  those  profits  in  the  business  of 
the  depositor.1 

Chancellor  KENT  held,  in  the  case  cited  from  him,  that  a 
trustee  must  not  be  a  gainer  from  his  employment  of  the  trust 
funds,  and  expressed  surprise  that  such  a  just  and  well-estab- 
lished point  of  law  should  have  been  drawn  in  question.  In 
applying  that  rule  to  an  infringer  of  a  patent,  when  treating 
him  as  though  he  were  a  trustee,  it  will  generally  be  found 
that  a  decree  for  legal  interest  on  the  profits  he  derived  from 
his  infringement  is  the  proper  order  to  make  ;  because  it  can 
seldom  be  known  precisely  how  much  the  infringer  did  gain 
from  his  use  of  those  profits,  and  because,  in  the  absence  of 
such  information,  a  decree  for  legal  interest  is  the  nearest  ap- 
proach that  can  be  made  to  perfect  justice.  It  is  open  to  the 
patentee  to  prove,  if  he  can,  that  the  use  which  the  infringer 
made  of  those  profits  resulted  in  a  rate  of  gain  larger  than  the 
legal  rate  of  interest  ;  but  it  is  not  open  to  the  infringer  to 
prove  that  he  traded  with  those  profits  and  lost  thereby,  or 
that  he  gained  less  than  the  legal  rate  of  interest  would  have 
brought  him.  These  propositions  are  both  in  accordance  with 
a  rule  wrhich  applies  to  trustees  :  the  rule  which  provides  that 
where  a  trustee  deals  with  the  trust  property  for  his  own 
advantage,  he  may  be  charged  with  his  gains  at  the  option  of 
the  cestuy  que  trust,  or  with  legal  interest,  if  that  would  be 
more  beneficial  to  the  equitable  owner  of  the  trust  property.1 

Relevant  to  the  precise  time  when  interest  on  infringers' 
profits  begin  to  run  against  infringers  who  receive  them,  the 
proper  and  equitable  rule  seems  to  be  that  adopted  by  Justice 
BLATCHFORD.3  It  computes  the  amount  of  profits  which  were 
derived  by  an  infringer  in  each  year  of  his  infringement,  and 
charges  him  with  simple  interest  at  the  local  legal  rate  on  that 
amount,  from  the  end  of  that  year  till  the  date  of  the  final 
decree.  This  rule  gives  the  infringer  an  average  of  half  a 
year  in  which  to  invest  those  profits  before  interest  begins  to 

1  Duffy  v.  Duncan,  35  New  York,  113,  1872. 

191,  1866  ;  Perry  on  Trusts,  Section  3  Tilghman  v.  Mitchell,  9  Blatch. 

46*.  17,  1871. 

*  Norris's  Appeal,  71  Penn.   Stat. 


506  PROFITS.  [CHAP.  xxn. 

accrue  against  him,  and  it  does  not  assume  that  he  so  invested 
them  as  to  derive  compound  interest  therefrom. 

§  739.  The  proceedings  by  which  profits  are  ascertained 
may  now  become  the  theme  of  treatment.  After  an  interloc- 
utory decree  is  entered,  directing  a  master  commissioner  of  the 
court  to  take  and  report  an  account  of  the  defendant's  profits, 
or  appointing  a  master  pro  hac  vice  for  that  purpose  ;  it 
becomes  the  business  of  the  complainant  to  introduce  evidence 
before  such  master,  to  prove  the  amount  of  those  profits. 
The  complainant  must  take  the  initiative.  It  is  not  the  prov- 
ince of  the  master  to  suggest  any  specific  line  of  proof,  or 
theory  of  accounting.  His  function  is  to  pass  upon  whatever 
evidence  the  complainant  produces,  in  the  light  of  whatever 
is  produced  by  the  defendant.' 

§  740.  The  evidence  upon  which  the  master  may  base  his 
report  may  consist  of  any  evidence  taken  in  the  case  prior  to 
the  interlocutory  decree,*  and  of  documents  introduced  and 
depositions  taken  by  the  parties  for  the  express  purpose  of  the 
accounting,  and  of  testimony  taken  viva  voce  in  the  presence 
of  the  master  ;*  and  of  personal  examination  by  him  of  the 
structures  or  processes  which  are  involved  in  the  questions 
before  him.*  If  the  required  documents  are  not  produced 
voluntarily,  the  master  may  require  their  production  ;  and  any 
necessary  depositions  may  be  taken  upon  commissions  to  be 
issued  upon  his  certificate,  from  the  clerk's  office  ;  or  they 
may  be  taken  according  to  the  acts  of  Congress.6  When  testi- 
mony is  taken  viva  voce  before  a  master,  either  party  may 
require  that  it  be  taken  down  in  writing,  in  order  that,  if 
necessary,  it  may  be  used  by  the  court.'  In  the  course  of  an 
accounting  before  a  master,  that  officer  has  full  authority  to  do 
all  acts  and  to  direct  all  proceedings  which  he  may  deem 
necessary  and  proper  to  the  justice  and  merits  of  the  case/ 

1  Garretson  v.  Clark,  4   Bann.   &  *  Equity  Rule  77  ;   Revised  Stat- 

Ard.  537,  1879.  utes,    Sections    863,    864,  and  865  ; 

8  Equity  Rule  80.  Section  535  of  this  book. 

a  Equity  Rule  77.  •  Equity  Rule  81. 

4  Piper  u.  Brown,  1  Holmes,  198,  '  Equity  Rule  77. 
1873. 


CHAP.   XXII.]  PROFITS.  507 

If,  for  example,  an  account  to  be  transcribed  or  deduced  from 
the  defendant's  books,  is  necessary  to  a  just  decision  of  the 
cause,  the  master  may  make  an  order  that  the  defendant  fur- 
nish such  an  account  by  a  certain  day  ;  and  such  an  order, 
when  served  on  the  defendant  by  any  disinterested  person, 
must  be  obeyed,  or  the  defendant  will  be  guilty  of  contempt 
of  court  for  not  obeying  it. '  Such  is  an  outline  of  the  pre- 
scribed proceedings  in  accordance  with  which  evidence  may 
be  produced  before  a  master  on  an  accounting  ;  but  the  parties 
may  by  stipulation  vary  those  proceedings  in  many  respects. 
It  is  sometimes  customary  for  counsel,  by  mutual  agreement,  to 
take  all  the  testimony  in  an  accounting,  by  depositions  taken 
before  any  person  duly  authorized  to  administer  the  necessary 
oaths,  and  to  print  the  whole  in  one  or  more  pamphlets  or 
books,  and  to  call  on  the  master  for  no  action  in  the  case  until 
the  questions  involved  are  ready  to  be  argued  before  him  on 
the  evidence  so  printed. 

§  741.  Objections  to  evidence,  in  order  to  be  availing,  must 
be  made  when  the  objectionable  piece  of  evidence  is  offered, 
or  the  objectionable  question  is  put,  or  the  objectionable  an- 
swer is  given.  If  the  master  is  present  at  the  time,  he  ought 
to  rule  upon  the  objection  at  once,  and  if  either  party  would 
appeal  from  that  ruling,  he  must  enter  an  immediate  objection 
thereto.  If  the  ruling  is  against  the  evidence  objected  to,  it 
is  necessary  for  the  party  who  offers  the  evidence,  if  he  would 
appeal  from  the  ruling,  to  do  so  by  an  immediate  motion  to 
the  court  to  direct  the  master  to  reverse  his  decision  upon  the 
point.  The  reason  for  this  practice  is  that  if  such  an  appeal 
could  be  taken  in  an  exception  to  the  master's  report,  it 
would,  when  taken  successfully,  necessitate  a  recommittal  of 
the  case  to  the  master,  in  order  to  enable  him  to  admit  the 
evidence  which  he  erroneously  rejected.  If  the  master's  rul- 
ing is  in  favor  of  the  evidence  objected  to,  that  evidence  will 
of  course  be  admitted  subject  to  the  objection,  and  that  ruling 
may  be  reviewed  by  the  court  on  exceptions  to  the  report  of 
the  master,  as  well  as  by  means  of  an  immediate  motion.  It 

1  Kerosene  Lamp  Heater  Co.  v.  Fisher,  5  Bann.  &  Ard.  79,  1880. 


508  PROFITS.  [CHAP.  xxn. 

may  be  reviewed  on  exceptions,  because  if  it  is  reversed,  that 
reversal  will  not  necessitate  any  addition  to  the  evidence 
before  the  court,  but  will  merely  cause  the  court  to  eliminate 
the  objectionable  evidence  from  among  the  factors  of  the  prob- 
lems before  it. 

If  the  master  is  not  present  when  the  cause  of  an  objection 
arises,  the  practice  is  for  the  notary  or  other  magistrate  who  is 
taking  the  deposition,  to  note  the  objection  thereon,  and  to 
take  down  the  evidence  objected  to  ;  for  he  has  no  authority  to 
make  any  ruling.  In  such  cases  the  objections  which  are 
noted  upon  the  depositions,  may  be  brought  to  the  attention  of 
the  master  on  the  argument  before  him,  and  his  speciiic  ruling 
thereon  may  be  required,  and  those  rulings  may  be  reviewed  by 
the  court,  on  exceptions  to  the  report  of  the  master,  as  far  as 
they  have  affected  that  report.  Most  of  the  points  stated  in 
this  section  are  contained  in  an  excellent  decision  of  Judge 
W.  D.  SHIPMAN,'  and  the  residue  are  deducible  from  that  de- 
cision, or  from  plain  principles  of  practice. 

§  742.  The  extent  of  the  defendant's  infringement  must  be 
determined  by  the  master  in  order  to  enable  him  to  ascertain 
the  amount  of  the  profits  which  the  defendant  derived  from 
that  infringement.  Where  the  infringement  was  all  alike,  or 
where  the  interlocutory  decree  specifies  the  particular  doings 
of  the  defendant  which  are  to  be  accounted  for  as  infringe- 
ments, the  only  question  for  the  master  to  decide  on  .this  point 
is  a  question  of  quantity.  But  where  the  interlocutory  decree 
merely  directs  the  master  to  take  and  report  an  account  of  tlie 
profits  which  the  defendant  derived  from  infringing  the  com- 
plainant's patent,  and  where  the  complainant  claims  that  cer- 
tain doings  of  the  defendant  which  were  not  proven  prior  to 
the  interlocutory  decree,  constitute  such  an  infringement,  it 
becomes  the  duty  of  the  master  to  decide  the  question  of  in- 
fringement involved."  Nor  would  it  be  unprecedented  for  a 
court,  when  directing  a  master  to  take  and  report  an  account 
of  infringers'  profits,  to  direct  him  also  to  decide  and  report 

1  Troy  Iron  and  Nail  Factory  v.          *  Knox  v.  Quicksilver  Mining  Co. 
Corning,  6  Blatch.  333,  1869.  6  Sawyer,  436,  1878. 


CHAP.   XXII.]  PROFITS. 

which  of  various  machines  used  by  the  defendant  were  in- 
fringements of  the  complainant's  patent,  and  to  make  up  his 
account  accordingly.1  But  the  most  convenient  and  least 
expensive  practice  is  for  the  court  to  decide  all  questions  of 
infringement  before  entering  an  interlocutory  decree  ;  because 
masters  are  more  likely  to  decide  such  questions  erroneously 
than  judges  are  ;  and  because,  if  a  master  holds  a  particular 
thing  to  be  an  infringement  which  the  court  holds  to  be  other- 
wise, the  time  and  expense  are  lost  which  were  expended  in 
taking  an  account  of  profits  derived  from  that  particular  arti- 
cle, unless  the  Supreme  Court  should  agree  with  the  master 
in  opinion  and  reverse  or  modify  the  decree  in  that  behalf. 

§  743.  "Where  the  alleged  infringements  involved  in  a  suit 
are  of  several  sorts,  the  master  generally  ought  to  report  in  a 
separate  item  the  profits  due  to  each  kind  ;  so  that  the  circuit 
court  on  exceptions,  or  the  Supreme  Court  on  an  appeal,  may 
render  a  decree  for  part  or  for  all  of  those  items,  according 
to  its  decision  upon  the  questions  of  infringement  involved. 
This  is  but  a  rule  of  convenience,  and  may  be  departed  from 
when  convenience  would  thus  be  better  served.  Where  the 
defendant  used  two  different  sorts  of  machines,  both  of  which 
the  complainant  claims  infringe  his  patent,  if  the  points  upon 
which  those  questions  of  infringement  depend  are  apparently 
the  same  in  both  cases,  and  if  the  two  sorts  of  machines  were 
so  used  by  the  defendant,  that  it  would  be  difficult  to  separate 
the  profits  derived  from  the  use  of  one  from  those  flowing 
from  the  use  of  the  other,  it  will  be  most  convenient  not  to 
attempt  to  do  so.  In  such  a  case  there  is  but  little  probability 
that  the  courts  will  hold  one  of  the  two  sorts  of  machines  to 
infringe,  while  holding  that  the  other  does  not,  and  there  is 
correspondingly  little  probability  that  a  necessity  will  arise  for 
a  division  of  the  profits  due  to  the  use  of  the  two  kinds. 

§  744.  A  draft  report  of  a  master  in  chancery,  is  one  which 
the  master  draws  up  after  the  testimony  has  all  been  taken, 
and  the  parties  have  been  heard  in  argument  on  that  testi- 
mony, and  the  master  has  formed  an  opinion  on  the  questions 

1  Cawood  Patent,  94  U.  S.  708,  1876. 


510  PROFITS.  [CHAP.  xxir. 

involved  in  the  reference  before  him.  Such  a  report  is  requi- 
site to  enable  the  parties  to  correct  any  misapprehension  into 
which  the  master  may  have  fallen,  without  the  alternative 
necessity  of  presenting  the  point  to  the  court.  When  com- 
pleted, such  a  report  is  either  filed  in  the  case,  or  served  on 
the  parties  or  their  solicitors  ;  and  it  thereupon  devolves  upon 
any  party  who  is  dissatisfied  with  the  master's  finding  to  file 
such  exceptions  to  his  draft  report,  as  will  call  his  attention  to 
each  alleged  error  of  which  the  dissatisfied  party  proposes  to 
complain.1  It  then  becomes  the  duty  of  the  master  to  con- 
sider or  reconsider  the  questions  involved  in  those  exceptions, 
and  thereupon  to  prepare  and  file  his  final  report  in  the  case. 
The  latter  will  be  identical  with  the  draft  report  if  the  consid- 
eration of  the  exceptions  to  the  earlier  document  fails  to  con- 
vince the  master  that  it  was  wrong  ;  but  if  he  is  so  convinced, 
he  will  concert  his  final  report  in  such  a  manner*  as  to  make  it 
embody  his  changed  opinion."  No  new  evidence  can  be  in- 
troduced before  a  master  after  he  has  made  his  draft  report  ;  * 
the  proceedings  upon  exceptions  thereto,  being  merely  in  the 
nature  of  a  rehearing  for  errors  apparent  on  the  face  of  the 
record.  According  to  strict  equity  practice,  it  is  necessary  to 
give  a  master  this  opportunity  to  correct  his  findings,  in  order 
to  save  time  and  labor  of  the  judge.4  But  this  strict  practice 
has  often  been  omitted  by  counsel  in  patent  cases,  and  its 
omission  been  condoned  by  opposing  counsel  or  by  the  court.* 
But  it  is  not  safe  to  omit  the  filing  of  such  exceptions  with  the 
master,  for  the  rule  which  requires  them  is  always  liable  to 
be  enforced,  and  the  enforcement  consists  in  the  court  disre- 
garding every  exception  to  a  master's  final  report,  which  was 
not  taken  before  the  master  himself,  by  way  of  exceptions  to 
his  draft  report.' 

1  Fischer  v.  Hayes,  16  Fed.  Rep.  4  Story  v.  Livingston,  13  Peters, 

469,  1883.  366,  1839. 

8  Sugar  Refinery  Co.  v.  Mathies-  6  Fischer  v.  Hayes,   16  Fed.  Rep. 

son,  3  Clif.  149,  1868  ;    Troy  Iron  469,  1883. 

and  Nail    Factory    v.    Corning,    6  •  McMickin  v.  Perm,  18  Howard, 

Blatch.  332,  1869.  510,  1855  ;  Troy  Iron  and  Nail  Fac- 

3  Piper  v.  Brown,  1  Holmes,  196,  tory  v.  Corning,  6  Blatch.  333,  1869. 
1873. 


CHAP.   XXII.]  PROFITS.  511 

§  745.  Exceptions  to  masters'  reports  ought  to  be  aimed 
with  precision  at  the  errors  which  such  reports  are  alleged  to 
contain.  Such  exceptions  may  be  filed  by  the  complainant  if 
he  thinks  that  the  master  has  erred  in  not  finding  any  profits, 
or  in  not  finding  any  damages,  or  in  finding  either  of  those 
foundations  of  recovery  to  have  been  smaller  than  the  evidence 
would  warrant  ;  and  such  exceptions  may  be  filed  by  the  de- 
fendant, if  he  thinks  that  the  master  erred  in  finding  profits 
or  in  finding  damages  to  an  amount  in  excess  of  what  the  evi- 
dence can  sustain. 

§  746.  Defendants'  exceptions  to  masters'  reports  are  divis- 
ible into  four  classes.  1.  Exceptions  which  state  that  there  is 
evidence  in  the  case,  proving  that  the  defendant  derived  no 
profit,  and  that  the  complainant  sustained  no  damage,  on  ac- 
count of  the  infringement.  2.  Exceptions  which  state  that 
there  is  evidence  in  the  case 'proving  that  the  master's  finding 
of  profits  or  of  damages  is  too  large  in  amount.  3.  Excep- 
tions which  deny  that  there  is  any  admissible  evidence  in  the 
case  proving  that  the  defendant  derived  profit,  or  that  the 
complainant  sustained  damage,  on  account  of  the  infringement. 
4.  Exceptions  which  deny  that  there  is  any  admissible  evidence 
in  the  case  proving  that  the  defendant  derived  profit,  or  that 
the  complainant  sustained  damage,  on  account  of  the  infringe- 
ment, to  so  great  an  amount  as  the  master  reported. 

The  first  two  of  these  classes  of  exceptions  rely  upon 
affirmations,  and  the  last  two  rely  upon  negations,  of  definite 
points  of  fact.  For  the  purposes  of  the  present  explanation 
the  four  classes  may  be  treated  in  two  groups  :  those  which 
are  affirmative  requiring  one  sort  of  management  in  practice, 
and  those  which  are  negative  requiring  another. 

§  747.  Defendants'  affirmative  exceptions  to  a  draft  report, 
must  specify  the  particular  evidence  upon  which  they  are  re- 
spectively based.  If  this  rule  were  otherwise,  such  an  excep 
tion  would  not  point  out  error,  and  would  therefore  fail  to 
perform  its  only  function.  Defendants'  affirmative  exceptions 
to  a  final  report  must  be  supported  by  reference  to  the  particular 
evidence  upon  which  the  exceptor  relies  ;  or  by  such  special 
statements  of  the  master,  as  justify  the  exceptor  in  affirming 


512  PROFITS.  [CHAP.  xxn. 

the  existence  of  the  particular  facts  upon  which  he  relies  to 
support  such  exceptions.  Were  the  court  required  to  wander 
at  large  into  the  evidence  which  was  before  the  master,  the 
reference  to  him  would  be  of  little  value.  Indeed  that  evi- 
dence need  not  be  reported  further  than  it  is  relied  upon  to 
support,  explain,  or  oppose  a  particular  exception.1 

§  748.  Defendants'  negative  exceptions  are  those  which 
call  in  question  the  admissibility  of  the  evidence  upon  which 
the  master  based  his  finding,  and  those  which  deny  the  pres- 
ence in  the  record  of  any  evidence  sufficient  to  support  that 
conclusion.  An  exception  of  the  first  of  these  sorts,  so  far 
partakes  of  the  nature  of  an  affirmative  exception,  that  it 
ought  to  specify  the  particular  evidence  objected  to,  so  that 
the  master,  on  exceptions  to  his  draft  report,  or  the  court,  on 
exceptions  to  the  final  report  of  the  master,  may  have  a  pre- 
cise issue  in  the  law  of  evidence  presented  for  decision.  But 
an  exception  of  the  second  of  these  kinds  cannot  be  expected 
to  specify  any  particular  evidence,  because  it  assumes  that  there 
is  none  in  the  record.  In  such  a  case,  the  proper  practice  is 
for  the  exceptor  to  require  the  master  to  make  a  special  state- 
ment, in  his  final  report,  of  the  particular  evidence  which  con- 
vinced his  judgment,  and  to  transmit  that  evidence  with  his 
report  into  court." 

§  749.  Complainants'  exceptions  to  a  master's  report  may 
be  of  two  classes.  1.  Exceptions  which  state  that  there  is 
evidence  in  the  case  proving  that  the  defendant  derived  larger 
profits,  and  that  the  complainant  sustained  larger  damages 
than  the  master  reported.  2.  Exceptions  which  state  that  the 
master  erred  in  admitting  inadmissible  evidence.  Both  of 
these  sorts  are  affirmative  in  their  nature,  and  when  made  to  a 
draft  report,  must  therefore  be  supported  by  references  to  the 
particular  evidence  upon  which  the  exceptor  relies,  or  by 
reference  to  the  particular  evidence  which  he  claims  was  im- 
properly admitted  against  his  objection,  as  the  case  may  hap- 


1  Harding  v.  Handy,  11  Wheaton,       307,  1832  ;  Greene  v.  Bishop,  1  Clif. 
126,  1826.  195,    1858  ;      The     Commander-in- 

sln  re  Hemiup,  3  Paige  (N.  Y.)       Chief ,  1  Wallace,  00,  1863. 


CHAP.   XXII.]  PROFITS.  513 

pen  to  require.  When  made  to  a  final  report,  a  complainant's 
exceptions,  like  the  affirmative  exceptions  of  a  defendant, 
must  be  supported  either  by  references  to  the  particular  evi- 
dence involved,  or  upon  such  special  statements  of  the  master 
as  will  obviate  that  necessity. 

§  750.  The  system  of  practice  relevant  to  a  master's  find- 
ing, appears  to  present  the  following  outlines  when  reviewed 
as  a  whole.  It  is  a  master's  function  to  investigate  the  ques- 
tions which  are  referred  to  him  by  the  court,  and  to  investi- 
gate no  others.  To  that  end,  he  takes  testimony  and  receives 
other  evidence,  and  decides  what  conclusions  are  justified 
thereby.  Unless  the  court  otherwise  directs,  the  master's 
draft  report  should  contain  those  conclusions  alone  ;  and  his 
final  report  should  contain  only  his  final  conclusions,  together 
with  such  statements  of  fact,  and  statements  and  pieces  of 
evidence,  as  the  parties  lawfully  require  him  to  attach  thereto. 
Where  the  exceptions  to  the  draft  report  involve  no  issues 
save  such  as  pertain  to  the  admissibility  of  particular  evidence, 
nothing  need  accompany  the  final  report  except  the  evidence 
objected  to,  and  a  statement  of  the  ground  upon  which  it  was 
admitted.  Where  those  exceptions  merely  affirm  the  pres- 
ence of  evidence  requiring  a  different  conclusion  from  that  of 
the  master,  nothing  need  accompany  the  final  report  save  the 
particular  evidence  which  those  exceptions  specify  in  that 
behalf.  Where  those  exceptions  merely  deny  the  presence  of 
evidence  to  justify  the  draft  report,  nothing  need  accompany 
the  final  report  save  the  evidence  which  carried  the  master  to 
the  conclusion  at  which  he  arrived.  Where  a  master  receives 
no  direction  from  the  court,  and  no  request  from  either  of  the 
parties,  to  report  any  evidence  ;  his  report  contains  nothing  but 
his  finding,  and  his  finding  is  conclusive.1 

1  Harding  v.  Handy,  11  Wheaton,  v.  Kussell,    36  Maine,    127,   1853  ; 

126,  1826  ;  In  re  Hemiup,   3  Paige  Sparhawk  v.  Wills,  5  Gray  (Mass.) 

(N.  Y.)  307,  1832  ;  Dexter  v.  Arnold,  431,  1855  ;  Greene  v.  Bishop,  1  Clif. 

2  Sumner,   131,    1834  ;    Donnell  v.  195,  1858  ;  Mason  v.  Kailroad  Co. 

Insurance  Co.  2  Snmner,  371,  1836  ;  52    Maine,    115,    1861  ;     Piper    v. 

Boston  Iron  Co.  v.  King,  2  Gushing  Brown,  1  Holmes,    198,   1873  ;  The 

(Mass.)  405,  1848  ;  Adams  v.  Brown,  Commander-in-Chief,  1  Wallace,  50, 

7  Cushing  (Mass.)  222,  1851  ;  Howe  18G3. 


APPENDIX. 


THE  PATENT  STATUTES. 


PATENT    ACT    OF    1790. 

1  STATUTES  AT  LARGE,  109. 

An  Act  to  promote  the  progress  of  useful  Arts. 

SECTION  1 .  Be  it  enacted  by  ike  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress 
assembled,  That  upon  the  petition  of  any  person  or  persons  to 
the  Secretary  of  State,  the  Secretary  for  the  Department  of 
War,  and  the  Attorney- General  of  the  United  States,  setting 
forth  that  he,  she,  or  they  hath  or  have  invented  or  discovered 
any  useful  art,  manufacture,  engine,  machine,  or  device,  or  any 
improvement  therein  not  before  known  or  used,  and  praying 
that  a  patent  may  be  granted  therefor,  it  shall  and  may  be 
lawful  to  and  for  the  said  Secretary  of  State,  the  Secretary  for 
the  Department  of  War,  and  the  Attorney- General,  or  any  two 
of  them,  if  they  shall  deem  the  invention  or  discovery  suffi- 
ciently useful  and  important,  to  cause  letters -patent  to  be  made 
out  in  the  name  of  the  United  States,  to  bear  teste  by  the  Pres- 
ident of  the  United  States,  reciting  the  allegations  and  sug- 
gestions of  the  said  petition,  and  describing  the  said  invention 
or  discovery,  clearly,  truly,  and  fully,  and  thereupon  granting 
to  such  petitioner  or  petitioners,  his,  her,  or  their  heirs,  ad- 
ministrators, or  assigns,  for  any  term  not  exceeding  fourteen 
years,  the  sole  and  exclusive  right  and  liberty  of  making, 
constructing,  using,  and  vending  to  others  to  be  used,  the  said 
invention  or  discovery  ;  which  letters  patent  shall  be  delivered 
to  the  Attorney-General  of  the  United  States  to  be  examined, 


518  THE   PATENT   STATUTES. 

who  shall,  within  fifteen  days  next  after  the  delivery  to  him,  if 
he  shall  find  the  same  conformable  to  this  act,  certify  it  to  be 
so  at  the  foot  thereof,  and  present  the  letters-patent  so  certified 
to  the  President,  who  shall  cause  the  seal  of  the  United  States 
to  be  thereto  affixed,  and  the  same  shall  be  good  and  available 
to  the  grantee  or  grantees  by  force  of  this  act,  to  all  and 
every  intent  and  purpose  herein  contained,  and  shall  be  re- 
corded in  a  book  to  be  kept  for  that  purpose  in  the  office  of 
the  Secretary  of  State,  and  delivered  to  the  patentee  or  his 
agent,  and  the  delivery  thereof  shall  be  entered  on  the  record 
and  indorsed  on  the  patent  by  the  said  Secretary  at  the  time  of 
granting  the  same. 

SECTION  2.  And  be  it  further  enacted.  That  the  grantee  or 
grantees  of  each  patent  shall,  at  the  time  of  granting  the 
same,  deliver  to  the  Secretary  of  State  a  specification  in  writing, 
containing  a  description,  accompanied  with  drafts  or  models, 
and  explanations  and  models  (if  the  nature  of  the  invention  or 
discovery  will  admit  of  a  model),  of  the  thing  or  things  by  him 
or  them  invented  or  discovered,  and  described  as  aforesaid,  in 
the  said  patents  ;  which  specification  shall  be  so  particular, 
and  said  models  so  exact,  as  not  only  to  distinguish  the  inven- 
tion or  discovery  from  other  things  before  known  and  used, 
but  also  to  enable  a  workman  or  other  person  skilled  in  the  art  of 
manufacture,  whereof  it  is  a  branch,  or  wherewith  it  may  be 
nearest  connected,  to  make,  construct,  or  use  the  same,  to  the 
end  that  the  public  may  have  the  full  benefit  thereof,  after  the 
expiration  of  the  patent  term  ;  which  specifications  shall  be 
filed  in  the  office  of  the  said  Secretary,  and  certified  copies 
thereof  shall  be  competent  evidence  in  all  courts  and  before 
all  jurisdictions,  where  any  matter  or  thing,  touching  or  con- 
cerning such  patent,  right,  or  privilege  shall  come  in  question. 

SECTION  3.  And  be  it  further  enacted,  That  upon  the  ap- 
plication of  any  person  to  the  Secretary  of  State,  for  a  copy  of 
any  such  specification,  and  for  permission  to  have  similar  model 
or  models  made,  it  shall  be  the  duty  of  the  Secretary  to  give 
such  a  copy,  and  to  permit  the  person  so  applying  for  a  similar 
model  or  models,  to  take,  or  make,  or  cause  the  same  to  be  taken 
or  made,  at  the  expense  of  such  applicant. 


THE   PATENT   STATUTES.  519 

SECTION  4.  And  le  it  further  enacted,  That  if  any  person  or 
persons  shall  devise,  make,  construct,  use,  employ,  or  vend, 
within  these  United  States,  any  art,  manufacture,  engine, 
machine,  or  device,  or  any  invention  or  improvement  upon,  or 
in  any  art,  manufacture,  engine,  machine,  or  device,  the  sole 
and  exclusive  right  of  which  shall  be  so  as  aforesaid  granted 
by  patent  to  any  person  or  persons,  by  virtue  and  in  pursuance 
of  this  act,  without  the  consent  of  the  patentee  or  patentees, 
their  executors,  administrators,  or  assigns,  first  had  and  ob- 
tained in  writing,  every  person  so  offending  shall  forfeit  and 
pay  to  the  said  patentee  or  patentees,  his,  her,  or  their  execu- 
tors, administrators,  or  assigns,  such  damages  as  shall  be 
assessed  by  a  jury,  and  moreover  shall  forfeit  to  the  person  ag- 
grieved, the  thing  or  things  so  devised,  made,  constructed,  used, 
employed,  or  vended,  contrary  to  the  true  intent  of  this  act, 
which  may  be  recovered  in  an  action  on  the  case  founded  on 
this  act. 

SECTION  5.  And  be  it  further  enacted.  That  upon  oath  or 
affirmation  made  before  the  judge  of  the  district  court  where 
the  defendant  resides,  that  any  patent  which  shall  be  issued  in 
pursuance  of  this  act,  was  obtained  surreptitiously  by,  or  upon 
false  suggestion,  and  motion  made  to  the  said  court,  within  one 
year  after  issuing  the  said  patent,  but  not  afterwards,  it  shall 
and  may  be  lawful  to  and  for  the  judge  of  the  said  district 
court,  if  the  matter  alleged  shall  appear  to  him  to  be  sufficient, 
to  grant  a  rule  that  the  patentee  or  patentees,  his,  her,  or  their 
executors,  administrators,  or  assigns,  show  cause  why  process 
should  not  issue  against  him,  her,  or  them,  to  repeal  such 
patents  ;  and  if  sufficient  cause  shall  not  be  shown  to  the  con- 
trary, the  rule  shall  be  made  absolute,  and  thereupon  the  said 
judge  shall  order  process  to  be  issued  as  aforesaid,  against  such 
patentee  or  patentees,  his,  her,  or  their  executors,  administra- 
tors, or  assigns.  And  in  case  no  sufficient  cause  shall  be  shown 
to  the  contrary,  or  if  it  shall  appear  that  the  patentee  was  not 
the  first  and  true  inventor  or  discoverer,  judgment  shall  be 
rendered  by  such  court  for  the  repeal  of  such  patent  or  patents  ; 
and  if  the  party  at  whose  complaint  the  process  issued  shall 
have  judgment  given  against  him,  he  shall  pay  all  such  costs 


520  THE   PATENT   STATUTES. 

as  the  defendant  shall  be  put  to  in  defending  the  suit,  to  be 
taxed  by  the  court,  and  recovered  in  such  manner  as  costs  ex- 
pended by  defendants  shall  be  recovered  in  due  course  of  law. 

SECTION  6.  And  be  it  further  enacted.  That  in  all  actions  to 
be  brought  by  such  patentee  or  patentees,  his,  her,  or  their  ex- 
ecutors, administrators,  or  assigns,  for  any  penalty  incurred  by 
virtue  of  this  act,  the  said  patents  or  specifications  shall  be 
prima  facie  evidence  that  the  said  patentee  or  patentees  was 
or  were  the  first  and  true  inventor  or  inventors,  discoverer  or 
discoverers,  of  the  things  so  specified,  and  that  the  same  is  truly 
specified  ;  but  that  nevertheless  the  defendant  or  defendants 
may  plead  the  general  issue,  and  give  this  act,  and  any  special 
matter  whereof  notice  in  writing  shall  have  been  given  to  the 
plaintiff,  or  his  attorney,  thirty  days  before  the  trial,  in  evi- 
dence tending  to  prove  that  the  specification  filed  by  the 
plaintiff  does  not  contain  the  whole  of  the  truth  concerning  his 
invention  or  discovery  ;  or  that  it  contains  more  than  is  neces- 
sary to  produce  the  effect  described  ;  and  if  the  concealment 
of  part,  or  the  addition  of  more  than  is  necessary,  shall  appear 
to  have  been  intended  to  mislead,  or  shall  actually  mislead  the 
public,  so  as  the  effect  described  cannot  be  produced  by  the 
means  specified,  then,  and  in  such  cases,  the  verdict  and  judg- 
ment shall  be  for  the  defendant. 

SECTION  7.  And  be  it  further  enacted,  That  such  patentee 
as  aforesaid  shall,  before  he  receives  his  patent,  pay  the  fol- 
lowing fees  to  the  several  officers  employed  in  making  out 
and  perfecting  the  same,  to  wit :  For  receiving  and  filing  the 
petition,  fifty  cents  ;  for  filing  specifications,  per  copy-sheet 
containing  one  hundred  words,  ten  cents ;  for  making  out 
patent,  two  dollars  ;  for  affixing  great  seal,  one  dollar  ;  for 
indorsing  the  day  of  delivering  the  same  to  the  patentee,  in- 
cluding all  intermediate  services,  twenty  cents. 

APPROVED  April  10,  1790. 

Repealed  February  21,  1793.  1  Statutes  at  Large,  Chap. 
11,  Section  12,  p.  323. 


THE    PATENT   STATUTES.  521 

PATENT  ACT   OF   1793. 
1  STATUTES  AT  LARGE,  318. 

An  Act  to  promote  the  progress  of  useful  Arts  ;  and  to  repeal 
the  act  heretofore  made  for  that  purpose. 

SECTION  1.  Be  it  enacted  l>y  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  when  any  person  or  persons,  being  a  citizen  or 
citizens  of  the  United  States,  shall  allege  that  he  or  they  have 
invented  any  new  and  useful  art,  machine,  manufacture,  or 
composition  of  matter,  or  any  new  and  useful  improvement  on 
any  art,  machine,  manufacture,  or  composition  of  matter,  not 
known  or  used  before  the  application,  and  shall  present  a  peti- 
tion to  the  Secretary  of  State,  signifying  a  desire  of  obtaining 
an  exclusive  property  in  the  same,  and  praying  that  a  patent 
may  be  granted  therefor,  it  shall  and  may  be  lawful  for  the 
said  Secretary  of  State  to  cause  letters-patent  to  be  made  out 
in  the  name  of  the  United  States,  bearing  teste  by  the  Presi- 
dent of  the  United  States,  reciting  the  allegations  and  sugges- 
tions of  the  said  petition,  and  giving  a  short  description  of  the 
said  invention  or  discovery,  and  thereupon  granting  to  such 
petitioner  or  petitioners,  his,  her,  or  their  heirs,  administrators,, 
or  assigns,  for  a  term  not  exceeding  fourteen  years,  the  full 
and  exclusive  right  and  liberty  of  making,  constructing,  using, 
and  vending  to  others  to  be  used,  the  said  invention  or  discovery, 
which  letters-patent  shall  be  delivered  to  the  Attorney-General 
of  the  United  States,  to  be  examined  ;  who,  within  fifteen  days 
after  such  delivery,  if  he  finds  the  same  conformable  to  this 
act,  shall  certify  accordingly,  at  the  foot  thereof,  and  return 
the  same  to  the  Secretary  of  State,  who  shall  present  the  letters- 
patent,  thus  certified,  to  be  signed,  and  shall  cause  the  seal  of 
the  United  States  to  be  thereto  affixed  ;  and  the  same  shall  be 
good  and  available  to  the  grantee  or  grantees,  by  force  of  this 
act,  and  shall  be  recorded  in  a  book,  to  be  kept  for  that  pur- 
pose, in  the  office  of  the  Secretary  of  Statej,  and  delivered 
to  the  patentee  or  his  order. 

SECTION  2.  Provided  always,  and  be  it  further  enacted,  That 
any  person  who  shall  have  discovered  an  improvement  in  the 


522  THE   PATENT    STATUTES. 

principle  of  any  machine,  or  in  the  process  of  any  composition 
of  matter,  which'  shall  have  been  patented,  and  shall  have  ob- 
tained a  patent  for  such  improvement,  he  shall  not  be  at  liberty 
to  make,  use,  or  vend  the  original  discovery,  nor  shall  the  first 
inventor  be  at  liberty  to  use  the  improvement  :  And  it  is  here- 
by enacted  and  declared,  that  simply  changing  the  form  or  the 
proportions  of  any  machine,  or  composition  of  matter,  in  any 
degree,  shall  not  be  deemed  a  discovery. 

SECTION  3.  And  be  it  further  enacted.  That  every  inventor, 
before  he  can  receive  a  patent,  shall  swear  or  affirm,  that  he 
does  verily  believe  that  he  is  the  true  inventor  or  discoverer 
of  the  art,  machine,  or  improvement  for  which  he  solicits  a 
patent,  which  oath  or  affirmation  may  be  made  before  any  per- 
son authorized  to  administer  oaths,  and  shall  deliver  a  written 
description  of  his  invention,  and  of  the  manner  of  using,  or 
process  of  compounding  the  same,  in  such  full,  clear,  and  ex- 
act terms,  as  to  distinguish  the  same  from  all  other  things 
before  known,  and  to  enable  any  person  skilled  in  the  art  or 
science  of  which  it  is  a  branch,  or  with  which  it  is  most  nearly 
connected,  to  make,  compound,  and  use  the  same.  And  in  the 
case  of  any  machine,  he  shall  fully  explain  the  principle,  and  the 
several  modes  in  which  he  has  contemplated  the  application  of 
that  principle  or  character,  by  which  it  may  be  distinguished 
from  other  inventions  ;  and  he  shall  accompany  the  whole  with 
drawings  and  written  references,  where  the  nature  of  the  case 
admits  of  drawings,  or  with  specimens  of  the  ingredients,  and 
of  the  composition  of  matter,  sufficient  in  quantity  for  the  pur- 
pose of  experiment,  where  the  invention  is  of  a  composition  of 
matter  ;  which  description,  signed  by  himself,  and  attested  by 
two  witnesses,  shall  be  filed  in  the  office  of  the  Secretary  of 
State,  and  certified  copies  thereof  shall  be  competent  evidence 
in  all  courts,  where  any  matter  or  thing,  touching  such  patent 
right  shall  come  'in  question.  And  such  inventor  shall,  more- 
over, deliver  aunodel  of  his  machine,  provided  the  Secretary 
shall  deem  such  model  to  be  necessary. 

SECTION  4.  And  "be  it  further  enacted,  That  it  shall  be  law- 
ful for  any  inventor,  his  executor  or  administrator,  to  assign 
the  title  and  interest  in  the  .-said  invention,  at  any  time,  and 


THE  PATENT   STATUTES.  523 

the  assignee,  having  recorded  the  said  assignment  in  the  office 
of  the  Secretary  of  State,  shall  thereafter  stand  in  the  place  of 
the  original  inventor,  both  as  to  right  and  responsibility,  and 
so  the  assignees  of  assigns,  to  any  degree. 

SECTION  5.  And  be  it  further  enacted,  That  if  any  person 
shall  make,  devise,  and  use,  or  sell  the  thing  so  invented,  the 
exclusive  right  of  which  shall,  as  aforesaid,  have  been  secured 
to  any  person  by  patent,  without  the  consent  of  the  patentee, 
his  executors,  administrators,  or  assigns,  first  obtained  in  writ- 
ing, every  person  so  offending  shall  forfeit  and  pay  to  the  pat- 
entee a  sum  that  shall  be  at  least  equal  to  three  times  the  price 
for  which  the  patentee  has  usually  sold  or  licensed,  to  other 
persons,  the  use  of  the  said  invention,  which  may  be  recovered 
in  an  action  on  the  case  founded  on  this  act,  in  the  circuit 
court  of  the  United  States,  or  any  other  court  having  compe- 
tent jurisdiction. 

SECTION  6.  Provided  always,  and  be  it  further  enacted, 
That  the  defendant  in  such  action  shall  be  permitted  to  plead 
the  general  issue,  and  give  this  act,  and  any  special  matter,  of 
which  notice  in  writing  may  have  been  given  to  the  plaintiff 
or  his  attorney,  thirty  days  before  trial,  in  evidence,  tending 
to  prove  that  the  specification  filed  by  the  plaintiff  does  not 
contain  the  whole  truth  relative  to  his  discovery,  or  that  it 
contains  more  than  is  necessary  to  produce  the  described  effect, 
which  concealment  or  addition  shall  fully  appear  to  have  been 
made  for  the  purpose  of  deceiving  the  public,  or  that  the  thing 
thus  secured  by  patent  was  not  originally  discovered  by  the 
patentee,  but  had  been  in  use,  or  had  been  described  in  some 
public  work  anterior  to  the  supposed  discovery  of  the  patentee, 
or  that  he  had  surreptitiously  obtained  a  patent  for  the  discov- 
ery of  another  person  ;  in  either  of  which  cases  judgment  shall 
be  rendered  for  the  defendant,  with  costs,  and  the  patent  shall 
be  declared  void. 

SECTION  7.  And  le  it  further  enacted,  That  where  any 
State,  before  its  adoption  of  the  present  form  of  government, 
shall  have  granted  an  exclusive  right  to  any  invention,  the 
party  claiming  that  right  shall  not  be  capable  of  obtaining  an 
exclusive  right  under  this  act,  but  on  relinquishing  his  right 


524:  THE    PATENT    STATUTES. 

under  such  particular  State,  and  of  such  relinquishment,  his 
obtaining  an  exclusive  right  under  this  act  shall  be  sufficient 
evidence. 

SECTION  8.  And  be  it  further  enacted.  That  the  persons 
whose  applications  for  patents  were,  at  the  time  of  passing  this 
act,  depending  before  the  Secretary  of  State,  Secretary  at  War, 
and  Attorney-General,  according  to  the  act  passed  the  second 
session  of  the  first  Congress,  entituled  "  An  act  to  promote  the 
progress  of  useful  arts,"  on  complying  with  the  conditions  of 
this  act,  and  paying  the  fees  herein  required,  may  pursue  their 
respective  claims  to  a  patent  under  the  same. 

SECTION  9.  And  be  it  further  enacted,  That  in  case  of  inter- 
fering applications,  the  same  shall  be  submitted  to  the  arbitra- 
tion of  three  persons,  one  of  whom  shall  be  chosen  by  each  of 
the  applicants,  and  the  third  person  shall  be  appointed  by  the 
Secretary  of  State  ;  and  the  decision  or  award  of  such  arbitra- 
tors, delivered  to  the  Secretary  of  State  in  writing,  and  sub- 
scribed by  them,  or  any  two  of  them,  shall  be  final,  as  far  as 
respects  the  granting  of  the  patent.  And  if  either  of  the  ap- 
plicants shall  refuse  or  fail  to  chuse  an  arbitrator,  the  patent 
shall  issue  to  the  opposite  party.  And  where  there  shall  be 
more  than  two  interfering  applications,  and  the  parties  apply- 
ing shall  not  all  unite  in  appointing  three  arbitrators,  it  shall 
be  in  the  power  of  the  Secretary  of  State  to  appoint  three  ar- 
bitrators for  the  purpose. 

SECTION  10.  And  be  it  further  enacted,  That  upon  oath  or 
affirmation  being  made  before  the  judge  of  the  district  court 
where  the  patentee,  his  executors,  administrators,  or  assigns, 
reside,  that  any  patent,  which  shall  be  issued  in  pursuance  of 
this  act,  was  obtained  surreptitiously,  or  upon  false  suggestion, 
and  motion  made  to  the  said  court,  within  three  years  after  is- 
suing the  said  patent,  but  not  afterward,  it  shall  and  may 
be  lawful  for  the  judge  of  the  said  district  court,  if  the  mat- 
ter alleged  shall  appear  to  him  to  be  sufficient,  to  grant  a  rule, 
that  the  patentee,  or  his  executor,  administrator,  or  assign  show 
cause  why  process  should  not  issue  against  him  to  repeal  such 
patent.  And  if  sufficient  cause  shall  not  be  shown  to  the  con- 


THE   PATENT   STATUTES.  525 

trary,  the  rule  shall  be  made  absolute,  and  thereupon  the  said 
judge  shall  order  process  to  be  issued  against  such  patentee,  or 
his  executors,  administrators,  or  assigns,  with  costs  of  suit. 
And  in  case  no  sufficient  cause  shall  be  shown  to  the  contrary, 
or  if  it  shall  appear  that  the  patentee  was  not  the  true  inventor 
or  discoverer,  judgment  shall  be  rendered  by  such  court  for 
the  repeal  of  such  patent  ;  and  if  the  party,  at  whose  complaint 
the  process  issued,  shall  have  judgment  given  against  him,  he 
shall  pay  all  such  costs  as  the  defendant  shall  be  put  to  in  de- 
fending the  suit,  to  be  taxed  by  the  court,  and  recovered  in  due 
course  of  law. 

SECTION  11.  And  be  it  further  enacted.  That  every  inventor, 
before  he  presents  his  petition  to  the  Secretary  of  State,  signi- 
fying his  desire  of  obtaining  a  patent,  shall  pay  into  the  treas- 
ury thirty  dollars,  for  which  he  shall  take  duplicate  receipts  ;  one 
of  which  receipts  he  shall  deliver  to  the  Secretary  of  State, 
when  he  presents  his  petition  ;  and  the  money  thus  paid  shall 
be  in  full  for  the  sundry  services  to  be  performed  in  the  office 
of  the  Secretary  of  State,  consequent  on  such  petition,  and 
shall  pass  to  the  account  of  clerk-hire  in  that  office  :  Provided 
nevertheless,  That  for  every  copy,  which  may  be  required  at 
the  said  office,  of  any  paper  respecting  any  patent  that  has 
been  granted,  the  person  obtaining  such  copy  shall  pay,  at  the 
rate  of  twenty  cents,  for  every  copy-sheet  of  one  hundred 
words,  and  for  every  copy  of  a  drawing,  the  party  obtaining 
the  same,  shall  pay  two  dollars,  of  which  payments  an  account 
shall  be  rendered,  annually,  to  the  treasury  of  the  United 
States,  and  they  shall  also  pass  to  the  account  of  clerk-hire  in 
the  office  of  the  Secretary  of  State. 

SECTION  12.  And  be  it  further  enacted,  That  the  act  passed 
the  tenth  day  of  April,  in  the  year  one  thousand  seven  hun- 
dred and  ninety,  intituled  "  An  act  to  promote  the  progress 
of  useful  arts,' '  be,  and  the  same  is  hereby,  repealed  :  Provided 
always,  That  nothing  contained  in  this  act  shall  be  construed 
to  invalidate  any  patent  that  may  have  been  granted  under  the 
authority  of  the  said  act ;  and  all  patentees  under  the  said  act, 
their  executors,  administrators,  and  assigns,  shall  be  considered 


526  THE    PATENT   STATUTES. 

within  the  purview  of  this  act,  in  respect  to  the  violation  of 
their  rights  :  provided  such  violations  shall  be  committed  after 
the  passing  of  this  act. 

APPROVED  February  21,  1793. 

Eepealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 


PATENT  ACT   OF   1794. 
1  STATUTES  AT  LARGE,  393. 

An  Act  supplementary  to  the  act  intituled  "  An  act  to  pro- 
mote the  progress  of  Useful  Arts." 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
all  suits,  actions,  process  and  proceedings,  heretofore  had  in 
any  District  Court  of  the  United  States,  under  an  act  passed 
the  tenth  day  of  April,  in  the  year  one  thousand  seven  hun- 
dred and  ninety,  intituled  "An  act  to  promote  the  progress 
of  useful  arts,"  which  may  have  been  set  aside,  suspended  or 
abated,  by  reason  of  the  repeal  of  the  said  act,  may  be  restored, 
at  the  instance  of  the  plaintiff  or  defendant,  within  one  year 
from  and  after  the  passing  of  this  act,  in  the  said  court,  to  the 
same  situation,  in  which  they  may  have  been  when  they  were  so 
set  aside,  suspended,  or  abated  ;  and  that  the  parties  to  the  said 
suits,  actions,  process  or  proceedings  be,  and  are  hereby,  entitled 
to  proceed  in  such  cases,  as  if  no  such  repeal  of  the  act  afore- 
said had  taken  place :  Provided  always,  That  before  any 
order  or  proceeding,  other  than  that  for  continuing  the  same 
suits,  after  the  reinstating  thereof,  shall  be  entered  or  had, 
the  defendant  or  plaintiff,  as  the  case  may  be,  against  whom 
the  same  may  have  been  reinstated,  shall  be  brought  into  court 
by  summons,  attachment,  or  such  other  proceeding  as  is  used 
in  other  cases  for  compelling  the  appearance  of  a  party. 

APPROVED  June  7,  1794. 

Kepealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357,  Sec- 
tion 21,  p.  125. 


THE   PATENT   STATUTES.  527 

PATENT  ACT  OF  1800. 
2  STATUTES  AT  LAKGE,  37. 

An  Act  to  extend  the  privilege  of  obtaining  patents  for  useful 
discoveries  and  inventions,  to  certain  persons  therein  men- 
tioned, and  to  enlarge  and  define  the  penalties  for  vio- 
lating the  rights  of  patentees. 

SECTION  1.  Be  it  enacted  ly  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  assem- 
bled, That  all  and  singular  the  rights  and  privileges  given,  in- 
tended or  provided  to  citizens  of  the  United  States,  respecting 
patents  for  new  inventions,  discoveries,  and  improvements,  by 
the  act  intituled  "  An  act  to  promote  the  progress  of  useful 
arts,  and  to  repeal  the  act  heretofore  made  for  that  purpose,' ' 
shall  be,  and  hereby  are,  extended  and  given  to  all  aliens  who 
at  the  time  of  petitioning  in  the  manner  prescribed  by  the 
said  act,  shall  have  resided  for  two  years  within  the  United 
States,  which  privileges  shall  be  obtained,  used,  and  enjoyed 
by  such  persons,  in  as  full  and  ample  manner,  and  under  the 
same  conditions,  limitations,  and  restrictions,  as  by  the  said 
act  is  provided  and  directed  in  the  case  of  citizens  of  the 
United  States  :  Provided  always,  That  every  person  petition- 
ing for  a  patent  for  any  invention,  art,  or  discovery,  pursuant 
to  this  act,  shall  make  oath  or  affirmation  before  some  person 
duly  authorized  to  administer  oaths  before  such  patent  shall  be 
granted,  that  such  invention,  art,  or  discovery  hath  not,  to  the 
best  of  his  or  her  knowledge  or  belief,  been  known  or  used 
either  in  this  or  any  foreign  country,  and  that  every  patent 
which  shall  be  obtained  pursuant  to  this  act,  for  any  invention, 
art,  or  discovery,  which  it  shall  afterwards  appear  had  been 
known  or  used  previous  to  such  application  for  a  patent,  shall 
be  utterly  void. 

SECTION  2.  And  he  it  further  enacted,  That  where  any  per- 
son hath  made,  or  shall  have  made,  any  new  invention, 
discovery,  or  improvement,  on  account  of  which  a  patent 
might,  by  virtue  of  this  or  the  above-mentioned  act,  be 
granted  to  such  person,  and  shall  die  before  any  patent  shall  be 
granted  therefor,  the  right  of  applying  for  and  obtaining  such 


528  THE   PATENT   STATUTES. 

patent,  shall  devolve  on  the  legal  representatives  of  such  per- 
son in  trust  for  the  heirs  at  law  of  the  deceased,  in  case  he  shall 
have  died  intestate  ;  but  if  otherwise,  then  in  trust  for  his 
devisees,  in  as  full  and  ample  manner,  and  under  the  same 
conditions,  limitations,  and  restrictions  as  the  same  was  held, 
or  might  have  been  claimed  or  enjoyed  by  such  person,  in  his 
or  her  lifetime  ;  and  when  application  for  a  patent  shall  be 
made  by  such  legal  representatives,  the  oath  or  affirmation, 
provided  in  the  third  section  of  the  before-mentioned  act,  shall 
be  so  varied  as  to  be  applicable  to  them. 

SECTION  3.  And  le  it  further  enacted,  That  where  any 
patent  shall  be  or  shall  have  been  granted  pursuant  to  this  or 
the  above-mentioned  act,  and  any  person  without  the  consent 
of  the  patentee,  his  or  her  executors,  administrators,  or  assigns, 
first  obtained  in  writing,  shall  make,  devise,  use,  or  sell  the 
thing  whereof  the  exclusive  right  is  secured  to  the  said  patentee 
by  such  patent,  such  person  so  offending  shall  forfeit  and  pay 
to  the  said  patentee,  his  executors,  administrators,  or  assigns, 
a  sum  equal  to  three  times  the  actual  damage  sustained  by  such 
patentee,  his  executors,  administrators,  or  assigns,  from  or  by 
reason  of  such  offence,  which  sum  shall  and  may  be  recovered 
by  action  on  the  case  founded  on  this  and  the  above-mentioned 
act,  in  the  circuit  court  of  the  United  States,  having  jurisdic- 
tion thereon. 

SECTION  4.  And  be  it  further  enacted,  That  the  fifth  section 
of  the  above-mentioned  act,  intituled  "  An  act  to  promote 
the  progress  of  useful  arts,  and  to  repeal  the  act  heretofore 
made  for  that  purpose,"  shall  be,  and  hereby  is,  repealed. 

APPROVED  April  17,  1800. 

Eepealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 

PATENT  ACT  OF  1819. 
3  STATUTES  AT  LARGE,  481. 

An  Act  to  extend  the  jurisdiction  of  the  circuit  courts  of  the 
United  States  to  cases  arising  under  the  law  relating  to 
patents. 


THE    PATENT    STATUTES.  529 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
the  circuit  courts  of  the  United  States  shall  have  original 
cognizance,  as  well  in  equity  as  at  law,  of  all  actions,  suits, 
controversies,  and  cases  arising  under  any  law  of  the  United 
States,  granting  or  confirming  to  authors  or  inventors  the  ex- 
clusive right  to  their  respective  writings,  inventions,  and  dis- 
coveries ;  and  upon  any  bill  in  equity,  filed  by  any  party 
aggrieved  in  any  such  cases,  shall  have  authority  to  grant  in- 
junctions, according  to  the  course  and  principles  of  courts  of 
equity,  to  prevent  the  violation  of  the  rights  of  any  authors  or 
inventors,  secured  to  them  by  any  laws  of  the  United  States, 
on  such  terms  and  conditions  as  the  said  courts  may  deem  fit 
and  reasonable  :  Provided  however.  That  from  all  judgments 
and  decrees  of  any  circuit  courts  rendered  in  the  premises,  a 
writ  of  error  or  appeal,  as  the  case  may  require,  shall  lie  to  the 
Supreme  Court  of  the  United  States,  in  the  same  manner,  and 
under  the  same  circumstances,  as  is  now  provided  by  law  in 
other  judgments  and  decrees  of  such  circuit  courts. 

APPROVED  February  15,  1819. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 

PATENT   ACT   OF  JULY   3,  1832. 

4  STATUTES  AT  LARGE,  559. 

An  Act  concerning  patents  for  useful  inventions. 
SECTION  1.  JBe  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  assem^ 
bled,  That  it  shall  be  the  duty  of  the  Secretary  of  State,, 
annually,  in  the  month  of  January,  to  report  to  Congress,  and' 
to  publish  in  two  of  the  newspapers  printed  in  the  city  of" 
Washington,  a  list  of  all  the  patents  for  discoveries,  inventions,, 
and  improvements,  which  shall  have  expired  within  the  year 
immediately  preceding,  with  the  names  of  the  patentees,  alpha- 
betically arranged. 

SECTION  2.  And  be  it  further  enacted,  That  application  to 
Congress  to  prolong  or  renew  the  term  of  a  patent  shall  be  made 


530  THE   PATENT   STATUTES. 

before  its  expiration,  and  shall  be  notified  at  least  once  a  month, 
for  three  months  before  its  presentation,  in  two  newspapers 
printed  in  the  city  of  Washington,  and  in  one  of  the  news- 
papers in  which  the  laws  of  the  United  States  shall  be  published 
in  the  State  or  Territory  in  which  the  patentee  shall  reside. 
The  petition  shall  set  forth  particularly  the  grounds  of  the  ap- 
plication. It  shall  be  verified  by  oath  ;  the  evidence  in  its 
support  may  be  taken  before  any  judge  or  justice  of  the  peace  ; 
it  shall  be  accompanied  by  a  statement  of  the  ascertained  value 
of  the  discovery,  invention,  or  improvement,  and  of  the  receipts 
and  expenditures  of  the  patentee,  so  as  to  exhibit  the  profit  or 
loss  arising  therefrom. 

SECTION  3.  And  be  it  further  enacted,  That  wherever  any 
patent  which  has  been  heretofore,  or  shall  be  hereafter,  granted 
to  any  inventor  in  pursuance  of  the  act  of  Congress,  entitled 
"  An  act  to  promote  the  progress  of  useful  arts,  and  to  repeal 
the  act  heretofore  made  for  that  purpose,"  passed  on  the 
twenty-first  day  of  February,  in  the  year  of  our  Lord,  one 
thousand  seven  hundred  and  ninety-three,  or  of  any  of  the  acts 
supplementary  thereto,  shall  be  invalid  or  inoperative,  by  reason 
that  any  of  the  terms  or  conditions  prescribed  in  the  third  section 
of  the  said  first-mentioned  act,  have  not,  by  inadvertence,  acci- 
dent, or  mistake,  and  without  any  fraudulent  or  deceptive  inten- 
tion, been  complied  with  on  the  part  of  the  said  inventor,  it  shall 
be  lawful  for  the  Secretary  of  State,  upon  the  surrender  to  him 
of  such  patent,  to  cause  a  new  patent  to  be  granted  to  the  said 
inventor  for  the  same  invention  for  the  residue  of  the  period 
then  unexpired,  for  which  the  original  patent  was  granted,  upon 
his  compliance  with  the  terms  and  conditions  prescribed  in  the 
said  third  section  of  the  said  act.  And,  in  case  of  his  death, 
or  any  assignment  by  him  made  of  the  same  patent,  the  like 
right  shall  vest  in  his  executors  and  administrators,  or  assignee 
or  assignees  :  Provided  however,  That  such  new  patent  so 
granted  shall,  in  all  respects,  be  liable  to  the  same  matters  of 
objection  and  defence  as  any  original  patent  granted  under  the 
said  first-mentioned  act.  But  no  public  use  or  privilege  of  the 
invention  so  patented,  derived  from  or  after  the  grant  of  the 
original  patent,  either  under  any  special  license  of  the  inventor, 


THE   PATENT   STATUTES.  531 

or  without  the  consent  of  the  patentee  that  there  shall  be  a 
free  public  use  thereof,  shall,  in  any  manner,  prejudice  his 
right  of  recovery  for  any  use  or  violation  of  his  invention  after 
the  grant  of  such  new  patent  as  aforesaid. 

APPROVED  July  3,  1832. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 


PATENT   ACT  OF  JULY  13,    1832. 

4  STATUTES  AT  LARGE,  577. 

An  Act  concerning  the  issuing  of  patents  to  aliens,  for  useful 
discoveries  and  inventions. 

Be  it  enacted  7>y  the  Senate  and  House  of  Representatives  of 
the  United  States  of  America,  in  Congress  assembled,  That  the 
privileges  granted  to  the  aliens  described  in  the  first  section  of 
the  act,  to  extend  the  privilege  of  obtaining  patents  for  useful 
discoveries  and  inventions  to  certain  persons  therein  mentioned, 
and  to  enlarge  and  define  the  penalties  for  violating  the  rights 
of  patentees,  approved  April  seventeenth,  eighteen  hundred, 
be  extended  in  like  manner  to  every  alien  who,  at  the  time  of 
petitioning  for  a  patent,  shall  be  resident  in  the  United  States, 
and  shall  have  declared  his  intention,  according  to  law,  to  be- 
come a  citizen  thereof  :  Provided,  That  every  patent  granted 
by  virtue  of  this  act  and  the  privileges  thereto  appertaining, 
shall  cease  and  determine  and  become  absolutely  void  without 
resort  to  any  legal  process  to  annul  or  cancel  the  same  in  case 
of  a  failure  on  the  part  of  any  patentee,  for  the  space  of  one  year 
from  the  issuing  thereof,  to  introduce  into  public  use  in  the 
United  States  the  invention  or  improvement  for  which  the 
patent  shall  be  issued  ;  or  in  case  the  same  for  any  period  of 
six  months  after  such  introduction  shall  not  continue  to  be 
publicly  used  and  applied  in  the  United  States,  or  in  case  of 
failure  to  become  a  citizen  of  the  United  States,  agreeably  to 
notice  given  at  the  earliest  period  within  which  he  shall  be  en- 
titled to  become  a  citizen  of  the  United  States. 

APPROVED  July  13,  1832. 


532  THE    PATENT   STATUTES. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 

PATENT   ACT  OF    1836. 

5  STATUTES  AT  LARGE,  117. 

An  Act  to  promote   the  progress  of   the  useful  arts,  and  to 

repeal  all  acts  and  parts  of  acts  heretofore  made  for  that 

purpose. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  assem- 
bled, That  there  shall  be  established  and  attached  to  the  De- 
partment of  State  an  office  to  be  denominated  the  Patent  Office  ; 
the  chief  officer  of  which  shall  be  called  the  Commissioner  of 
Patents,  to  be  appointed  by  the  President,  by  and  with  the 
advice  and  consent  of  the  Senate,  whose  duty  it  shall  be,  under 
the  direction  of  the  Secretary  of  State,  to  superintend,  execute, 
and  perform  all  such  acts  and  things  touching  and  respecting 
the  granting  and  issuing  of  patents  for  new  and  useful  dis- 
coveries, inventions,  and  improvements,  as  are  herein  provided 
for,  or  shall  hereafter  be,  by  law,  directed  to  be  done  and  per- 
formed, and  shall  have  the  charge  and  custody  of  all  the  books, 
records,  papers,  models,  machines,  and  all  other  things  belong- 
ing to  said  office.  And  said  Commissioner  shall  receive  the  same 
compensation  as  is  allowed  by  law  to  the  Commissioner  of  the 
Indian  Department,  and  shall  be  entitled  to  send  and  receive 
letters  and  packages  by  mail,  relating  to  the  business  of  the 
office,  free  of  postage. 

SECTION  2.  And  be  it  further  enacted,  That  there  shall  be  in 
said  office  an  inferior  officer,  to  be  appointed  by  the  said  princi- 
pal officer,  with  the  approval  of  the  Secretary  of  State,  to  re- 
ceive an  annual  salary  of  seventeen  hundred  dollars,  and 
to  be  called  the  Chief  Clerk  of  the  Patent  Office  ;  who  in  all 
cases  during  the  necessary  absence  of  the  Commissioner,  or 
when  then  said  principal  office  shall  become  vacant,  shall  have 
the  charge  and  custody  of  the  seal,  and  of  the  records,  books, 
papers,  machines,  models,  and  all  other  things  belonging  to 
the  said  office,  and  shall  perform  the  duties  of  Commissioner 


THE   PATENT   STATUTES.  533 

during  such  vacancy.  And  the  said  Commissioner  may  also, 
with  like  approval,  appoint  an  examining  clerk,  at  an  annual 
salary  of  fifteen  hundred  dollars  ;  two  other  clerks  at  twelve 
hundred  dollars  each,  one  of  whom  shall  be  a  competent 
draughtsman  ;  one  other  clerk  at  one  thousand  dollars ;  a 
machinist  at  twelve  hundred  and  fifty  dollars  ;  and  a  messen- 
ger at  seven  hundred  dollars.  And  said  Commissioner,  clerks, 
and  every  other  person  appointed  and  employed  in  said  office, 
shall  be  disqualified  and  interdicted  from  acquiring  or  taking, 
except  by  inheritance, 'during  the  period  for  which  they  shall 
hold  their  appointments,  respectively,  any  right  or  interest, 
directly  or  indirectly,  in  any  patent  for  an  invention  or  discovery 
which  has  been,  or  may  hereafter  be  granted. 

SECTION  3.  And  be  it  further  enacted,  That  the  said  principal 
officer,  and  every  other  person  to  be  appointed  in  the  said 
office,  shall,  before  he  enters  upon  the  duties  of  his  office  or 
appointment,  make  oath  or  affirmation  truly  and  faithfully  to 
execute  the  trust  committed  to  him.  And  the  said  Commis- 
sioner and  the  chief  clerk  shall  also,  before  entering  upon  their 
duties,  severally  give  bonds,  with  sureties,  to  the  Treasurer  of 
the  United  States,  the  former  in  the  sum  of  ten  thousand 
dollars,  and  the  latter  in  the  sum  of  five  thousand  dollars,  with 
condition  to  render  a  true  and  faithful  account  to  him  or  his 
successor  in  office,  quarterly,  of  all  moneys  which  shall  be  by 
them  respectively  received  for  duties  on  patents,  and  for  copies 
of  records  and  drawings,  and  all  other  moneys  received  by 
virtue  of  said  office. 

SECTION  4.  And  be  it  further  enacted,  That  the  said  Commis- 
sioner shall  cause  a  seal  to  be  made  and  provided  for  the  said 
office,  with  such  device  as  the  President  of  the  United  States 
shall  approve  ;  and  copies  of  any  records,  books,  papers,  or 
drawings  belonging  to  the  said  office,  under  the  signature  of 
the  said  Commissioner,  or,  when  the  office  shall  be  vacant  under 
the  signature  of  the  chief  clerk,  with  the  said  seal  affixed,  shall 
be  competent  evidence  in  all  cases  in  which  the  original  records, 
books,  papers,  or  drawings  could  be  evidence.  And  any  person 
making  application  therefor  may  have  certified  copies  of  the 
records,  drawings,  and  other  papers  deposited  in  said  office,  on 


534  THE    PATENT   STATUTES. 

paying  for  the  written  copies  the  sum  of  ten  cents  for  every 
page  of  one  hundred  words  ;  and  for  copies  of  drawings  the 
reasonable  expense  of  making  the  same. 

SECTION  5.  And  be  it  further  enacted.  That  all  patents  issned 
from  said  office  shall  be  issued  in  the  name  of  the  United  States, 
and  under  the  seal  of  said  office,  and  be  signed  by  the  Secre- 
tary of  State,  and  countersigned  by  the  Commissioner  of  the 
said  office,  and  shall  be  recorded,  together  with  the  descriptions, 
specifications,  and  drawings,  in  the  said  office,  in  books  to  be 
kept  for  that  purpose.  Every  such  patent  shall  contain  a  short 
description  or  title  of  the  invention  or  discovery,  correctly  in- 
dicating its  nature  and  design,  and  in  its  terms  grant  to  the 
applicant  or  applicants,  his  or  their  heirs,  administrators,  ex- 
ecutors, or  assigns,  for  a  term  not  exceeding  fourteen  years, 
the  full  and  exclusive  right  and  liberty  of  making,  using,  and 
vending  to  others  to  be  used,  the  said  invention  or  discovery, 
referring  to  the  specifications  for  the  particulars  thereof ,  a  copy 
of  which  shall  be  annexed  to  the  patent,  specifying  what  the 
patentee  claims  as  his  invention  or  discovery. 

SECTION  6.  And  be  ibfurther  enacted,  That  any  person  or 
persons,  having  discovered  or  invented  any  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter,  or  any  new 
and  useful  improvement  on  any  art,  machine,  manufacture,  or 
composition  of  matter,  not  known  or  used  by  others  before  his 
or  their  discovery  or  invention  thereof,  and  not,  at  the  time  of 
his  application  for  a  patent,  in  public  use  or  on  sale,  with  his 
consent  or  allowance,  as  the  inventor  or  discoverer  ;  and  shall 
desire  to  obtain  an  exclusive  property  therein,  may  make  appli- 
cation, in  writing,  to  the  Commissioner  of  Patents,  expressing 
such  desire,  and  the  Commissioner,  on  .due  proceedings  had, 
may  grant  a  patent  therefor.  But  before  any  inventor  shall 
receive  a  patent  for  any  such  new  invention  or  discovery,  he 
shall  deliver  a  written  description  of  his  invention  or  discovery, 
and  of  the  manner  and  process  of  making,  constructing,  using, 
and  compounding  the  same,  in  such  full,  clear,  and  exact  terms, 
avoiding  unnecessary  prolixity,  as  to  enable  any  person  skilled 
in  the  art  or  science  to  which  it  appertains,  or  with  which  it  is 
most  nearly  connected,  to  make,  construct,  compound,  and  use 


THE    PATENT   STATUTES.  535 

the  same  ;  and  in  case  of  any  machine,  he  shall  fully  explain 
the  principle,  and  the  several  modes  in  which  he  has  contem- 
plated the  application  of  that  principle  or  character  by  which 
it  may  be  distinguished  from  other  inventions  ;  and  shall  par- 
ticularly  specify  and  point  out  the  part,  improvement,  or  com- 
bination, which  he  claims  as  his  own  invention  or  discovery. 
He  shall,  furthermore,  accompany  the  whole  with  a  drawing  or 
drawings,  and  written  references,  where  the  nature  of  the 
case  admits  of  drawings,  or  with  specimens  of  ingredients, 
and  of  the  composition  of  matter,  sufficient  in  quantity  for  the 
purpose  of  experiment,  where  the  invention  or  discovery  is  of 
a  composition  of  matter ;  which  descriptions  and  drawings, 
signed  by  the  inventor  and  attested  by  two  witnesses,  shall  be 
filed  in  the  Patent  Office ;  and  he  shall  moreover  furnish  a 
model  of  his  invention,  in  all  cases  which  admit  of  a  represen- 
tation by  model,  of  a  convenient  size  to  exhibit  advantageously 
its  several  parts.  The  applicant  shall  also  make  oath  or  affir- 
mation that  he  does  verily  believe  that  he  is  the  original  and 
first  inventor  or  discoverer  of  the  art,  machine,  composition, 
or  improvement,  for  which  he  solicits  a  patent,  and  that  he 
does  not  know  or  believe  that  the  same  was  ever  before  known 
or  used  ;  and  also  of  what  country  he  is  a  citizen  ;  which  oath 
or  affirmation  may  be  made  before  any  person  authorized  by 
law  to  administer  oaths. 

SECTION  7.  And  "be  it  further  enacted,  That  on  the  filing  of 
any  such  application,  description,  and  specification,  and  the 
payment  of  the  duty  hereinafter  provided,  the  Commissioner 
shall  make,  or  cause  to  be  made,  an  examination  of  the  alleged 
new  invention  or  discovery  ;  and  if,  on  any  such  examination, 
it  shall  not  appear  to  the  Commissioner  that  the  same  had  been 
invented  or  discovered  by  any  other  person  in  this  country  prior 
to  the  alleged  invention  or  discovery  thereof  by  the  applicant, 
or  that  it  had  been  patented  or  described  in  any  printed  publi- 
cation in  this  or  any  foreign  country,  or  had  been  in  public  use 
or  on  sale  with  the  applicant's  consent  or  allowance  prior  to  the 
application,  if  the  Commissioner  shall  deem  it  to  be  sufficiently 
useful  and  important,  it  shall  be  his  duty  to  issue  a  patent 
therefor.  But  whenever,  on  such  examination,  it  shall  appear 


536  THE   PATENT    STATUTES. 

to  the  Commissioner  that  the  applicant  was  not  the  original  and 
first  inventor,  or  discoverer  thereof,  or  that  any  part  of  that 
which  is  claimed  as  new  had  before  been  invented  or  discov- 
ered, or  patented,  or  described  in  any  printed  publication  in 
this  or  any  foreign  country,  as  aforesaid,  or  that  the  description 
is  defective  and  insufficient,  he  shall  notify  the  applicant  thereof, 
giving  him,  briefly,  such  information  and  references  as  may  be 
useful  in  judging  of  the  propriety  of  renewing  his  appli- 
cation, or  of  altering  his  specification,  to  embrace  only  that 
part  of  the  invention  or  discovery  which  is  new.  In  every 
such  case,  if  the  applicant  shall  elect  to  withdraw  his  applica- 
tion, relinquishing  his  daim  to  the  model,  he  shall  be  entitled 
to  receive  back  twenty  dollars,  part  of  the  duty  required  by 
this  act,  on  filing  a  notice  in  writing  of  such  election  in  the 
Patent  Office,  a  copy  of  which,  certified  by  the  Commissioner, 
shall  be  a  sufficient  warrant  to  the  treasurer  for  paying  back  to 
the  said  applicant  the  said  sum  of  twenty  dollars.  But  if  the 
applicant  in  such  case  shall  persist  in  his  claims  for  a  patent,  with 
or  without  any  alteration  in  his  specification,  he  shall  be  re- 
quired to  make  oath  or  affirmation  anew,  in  manner  as  afore- 
said. And  if  the  specification  and  claim  shall  not  have  been  so 
modified  as,  in  the  opinion  of  the  Commissioner,  shall  entitle 
the  applicant  to  a  patent,  he  may,  on  appeal,  and  upon  request 
in  writing,  have  the  decision  of  a  board  of  examiners,  to  be 
composed  of  three  disinterested  persons,  who  shall  be  appoint- 
ed for  that  purpose  by  the  Secretary  of  State,  one  of  whom  at 
least,  to  be  selected,  if  practicable  and  convenient,  for  his 
knowledge  and  skill  in  the  particular  art,  manufacture,  or 
branch  of  science  to  which  the  alleged  invention  appertains  ; 
who  shall  be  under  oath  or  affirmation  for  the  faithful  and  im- 
partial performance  of  the  duty  imposed  upon  them  by  said 
appointment.  Said  board  shall  be  furnished  with  a  certificate  in 
writing  of  the  opinion  and  decision  of  the  Commissioner,  stating 
the  particular  grounds  of  his  objection,  and  the  part  or  parts  of 
the  invention  which  he  considers  as  not  entitled  to  be  patented. 
And  the  said  board  shall  give  reasonable  notice  to  the  applicant, 
as  well  as  to  the  Commissioner,  of  the  time  and  place  of  their 
meeting,  that  they  may  have  an  opportunity  of  furnishing  them 


THE   PATENT   STATUTES.  537 

with  such  facts  and  evidence  as  they  may  deem  necessary  to  a 
just  decision  ;  and  it  shall  be  the  duty  of  the  Commissioner  to 
furnish  to  the  board  of  examiners  such  information  as  he  may 
possess  relative  to  the  matter  under  their  consideration.  And 
on  an  examination  and  consideration  of  the  matter  by  such 
board,  it  shall  be  in  their  power,  or  of  a  majority  of  them,  to 
reverse  the  decision  of  the  Commissioner,  either  in  whole  or  in 
part,  and  their  opinion  being  certified  to  the  Commissioner,  he 
shall  be  governed  thereby  in  the  further  proceedings  to  be  had 
on  such  application  :  Provided  however,  That  before  a  board 
shall  be  instituted  in  any  such  case,  the  applicant  shall  pay  to 
the  credit  of  the  treasury,  as  provided  in  the  ninth  section  of 
this  act,  the  sum  of  twenty- five  dollars,  and  each  of  said  per- 
sons so  appointed  shall  be  entitled  to  receive  for  his  services  in 
each  case  a  sum  not  exceeding  ten  dollars,  to  be  determined  and 
paid  by  the  Commissioner  out  of  any  moneys  in  his  hands, 
which  shall  be  in  full  compensation  to  the  persons  who  rnay  be 
so  appointed,  for  their  examination  and  certificate  as  aforesaid. 
SECTION  8.  And  be  it  further  enacted,  That  whenever  an 
application  shall  be  made  for  a  patent  which,  in  the  opinion  of  the 
Commissioner,  would  interfere  with  any  other  patent  for  which 
an  application  may  be  pending,  or  with  any  unexpired  patent 
which  shall  have  been  granted,  it  shall  be  the  duty  of  the  Com- 
missioner to  give  notice  thereof  to  such  applicants,  or  patentees, 
as  the  case  may  be  ;  and  if  either  shall  be  dissatisfied  with  the 
decision  of  the  Commissioner  on  the  question  of  priority  of  right 
or  invention,  on  a  hearing  thereof,  he  may  appeal  from  such 
decision,  on  the  like  terms  and  conditions  as  are  provided  in 
the  preceding  section  of  this  act  ;  and  the  like  proceedings 
shall  be  had,  to  determine  which  or  whether  either  of  the  appli- 
cants is  entitled  to  receive  a  patent  as  prayed  for.  J3ut  noth- 
ing in  this  act  contained  shall  be  construed  to  deprive  an  orig- 
inal and  true  inventor  of  the  right  to  a  patent  for  his  invention, 
by  reason  of  his  having  previously  taken  out  letters-patent 
therefor  in  a  foreign  country,  and  the  same  having  been  pub- 
lished, at  any  time  within  six  months  next  preceding  the  filing 
of  his  specification  and  drawings.  And  whenever  the  appli- 
cant shall  request  it,  the  patent  shall  take  date  from  the  time 


538  THE    PATENT    STATUTES. 

of  the  filing  of  the  specification  and  drawings,  not  however 
exceeding  six  months  prior  to  the  actual  issuing  of  the  patent ; 
and  on  like  request,  and  the  payment  of  the  duty  herein 
required,  by  any  applicant,  his  specification  and  drawings  shall 
be  filed  in  the  secret  archives  of  the  office  until  he  shall  fur- 
nish the  model  and  the  patent  to  be  issued,  not  exceeding  the 
term  of  one  year,  the  applicant  being  entitled  to  notice  of 
interfering  applications. 

SECTION  9.  And  be  it  further  enacted,  That  before  any 
application  for  a  patent  shall  be  considered  by  the  Commissioner 
as  aforesaid,  the  applicant  shall  pay  into  the  treasury  of  the 
United  States,  or  into  the  Patent  Office,  or  into  any  of  the 
deposit  banks,  to  the  credit  of  the  treasury,  if  he  be  a  citizen 
of  the  United  States,  or  an  alien,  and  shall  have  been  resident 
in  the  United  States  for  one  year  next  preceding,  and  shall 
have  made  oath  of  his  intention  to  become  a  citizen  thereof, 
the  sum  of  thirty  dollars ;  if  a  subject  of  the  king  of  Great 
Britain,  the  sum  of  five  hundred  dollars ;  and  all  other  per- 
sons the  sum  of  three  hundred  dollars  ;  for  which  payment 
duplicate  receipts  shall  be  taken,  one  of  which  to  be  filed  in  the 
office  of  the  Treasurer.  And  the  moneys  received  into  the 
treasury  under  this  act  shall  constitute  a  fund  for  the  payment 
of  the  salaries  of  the  officers  and  clerks  herein  provided  for, 
and  all  other  expenses  of  the  Patent  Office,  and  to  be  called  the 
patent  fund. 

SECTION  10.  And  ~be  it  further  enacted,  That  where  any 
person  hath  made,  or  shall  have  made,  any  new  invention,  dis- 
covery, or  improvement,  on  account  of  which  a  patent  might 
by  virtue  of  this  act  be  granted,  and  such  person  shall  die  be- 
fore any  patent  shall  be  granted  therefor,  the  right  of  applying 
for  and  obtaining  such  patent  shall  devolve  on  the  executor  or 
administrator  of  such  person,  in  trust  for  the  heirs  at  law  of  the 
deceased,  in  case  he  shall  have  died  intestate  :  but  if  otherwise, 
then  in  trust  for  his  devisees,  in  as  full  and  ample  manner, 
and  under  the  same  conditions,  limitations,  and  restrictions  as 
the  same  was  held,  or  might  have  been  claimed  or  enjoyed  by 
such  person  in  his  or  her  lifetime  ;  and  when  application  for 
a  patent  shall  be  made  by  such  legal  representatives,  the  oath 


THE    PATENT   STATUTES.  539 

or  affirmation  provided  in  the  sixth  section  of  this  act  shall 
be  so  varied  as  to  be  applicable  to  them. 

SECTION  11.  And  be  it  further  enacted,  That  every  patent 
shall  be  assignable  in  law,  either  as  to  the  whole  interest,  or 
any  undivided  part  thereof,  by  any  instrument  in  writing  ; 
which  assignment,  and  also  every  grant  and  conveyance  of  the 
exclusive  right,  under  any  patent,  to  make  and  use,  and  to 
grant  to  others  to  make  and  use  the  thing  patented  within  and 
throughout  any  specified  part  or  portion  of  the  United  States, 
shall  be  recorded  in  the  Patent  Office  within  three  months  from 
the  execution  thereof,  for  which  the  assignee  or  grantee  shall 
pay  to  the  Commissioner  the  sum  of  three  dollars. 

SECTION  12.  And  be  it  further  enacted,  That  any  citizen  of 
the  United  States,  or  alien,  who  shall  have  been  a  resident  of 
the  United  States  one  year  next  preceding,  and  shall  have 
made  oath  of  his  intention  to  become  a  citizen  thereof,  who  shall 
have  invented  any  new  art,  machine,  or  improvement  thereof, 
and  shall  desire  further  time  to  make  the  same,  may,  on 
paying  to  the  credit  of  the  treasury,  in  manner  as  provided 
in  the  ninth  section  of  this  act,  the  sum  of  twenty  dollars,  file 
in  the  Patent  Office  a  caveat,  setting  forth  the  design  and  pur- 
pose thereof,  and  its  principal  and  distinguishing  characteris- 
tics, and  praying  protection  of  his  right  till  he  shall  have 
matured  his  invention  ;  which  sum  of  twenty  dollars,  in  case  the 
person  filing  such  caveat  shall  afterwards  take  out  a  patent  for 
the  invention  therein  mentioned,  shall  be  considered  a  part  of 
the  sum  herein  required  for  the  same.  And  such  caveat  shall  be 
filed  in  the  confidential  archives  of  the  office,  and  preserved  in 
secrecy.  And  if  application  shall  be  made  by  any  other  person 
within  one  year  from  the  time  of  filing  such  caveat,  for  a 
patent  of  any  invention  with  which  it  may  in  any  respect  inter- 
fere, it  shall  be  the  duty  of  the  Commissioner  to  deposit  the 
description,  specifications,  drawings,  and  model,  in  the  confi- 
dential archives  of  the  office,  and  to  give  notice,  by  mail,  to 
the  person  filing  the  caveat,  of  such  application,  who  shall, 
within  three  months  after  receiving  the  notice,  if  he  would 
avail  himself  of  the  benefit  of  his  caveat,  file  his  description, 
specifications,  drawings,  and  model ;  and  if,  in  the  opinion  of 


540  THE   PATENT   STATUTES. 

the  Commissioner,  the  specifications  of  claim  interfere  with 
each  other,  like  proceedings  may  be  had  in  all  respects  as  are 
in  this  act  provided  in  the  case  of  interfering  applications : 
Provided  however,  That  no  opinion  or  decision  of  any  board 
of  examiners,  under  the  provisions  of  this  act,  shall  precludo 
any  person,  interested  in  favor  of  or  against  the  validity  of  any 
patent  which  has  been  or  may  hereafter  be  granted,  from  the 
right  to  contest  the  same  in  any  judicial  court  in  any  action  in 
which  its  validity  may  come  in  question. 

SECTION  13.  And  be  it  further  enacted,  That  whenever  any 
patent  which  has  heretofore  been  granted,  or  which  shall  here- 
after be  granted,  shall  be  inoperative,  or  invalid,  by  reason  of 
a  defective  or  insufficient  description  or  specification,  or  by 
reason  of  the  patentee  claiming  in  his  specification  as  his  own 
invention  more  than  he  had  or  shall  have  a  right  to  claim  as 
new  ;  if  the  error  has  or  shall  have  arisen  by  inadvertency,  ac- 
cident, or  mistake,  and  without  any  fraudulent  or  deceptive  in- 
tention, it  shall  be  lawful  for  the  Commissioner,  upon  the  sur- 
render to  him  of  such  patent,  and  the  payment  of  the  further 
duty  of  fifteen  dollars,  to  cause  a  new  patent  to  be  issued  to 
the  said  inventor,  for  the  same  invention,  for  the  residue  of  the 
period  then  unexpired  for  which  the  original  patent  was  grant- 
ed, in  accordance  with  the  patentee's  corrected  description  and 
specification.  And  in  case  of  his  death,  or  any  assignment  by 
him  made  of  the  original  patent,  a  similar  right  shall  vest  in 
his  executors,  administrators,  or  assignees.  And  the  patent,  so 
reissued,  together  with  the  corrected  description  and  specifica- 
tion, shall  have  the  same  effect  and  operation  in  law,  on  the 
trial  of  all  actions  hereafter  commenced  for  causes  subsequently 
accruing,  as  though  the  same  had  been  originally  filed  in  such 
corrected  form,  before  the  issuing  out  of  the  original  patent. 
And  whenever  the  original  patentee  shall  be  desirous  of  adding 
the  description  and  specification  of  any  new  improvement  of 
the  original  invention  or  discovery  which  shall  have  been  in- 
vented or  discovered  by  him  subsequent  to  the  date  of  his 
patent,  he  may,  like  proceedings  being  had  in  all  respects  as  in 
the  case  of  original  applications,  and  on  the  payment  of  fifteen 
dollars  as  hereinbefore  provided,  have  the  same  annexed  to  the 


THE    PATENT    STATUTES.  541 

original  description  and  specification  ;  and  the  Commissioner 
shall  certify,  on  the  margin  of  such  annexed  description  and 
specification,  the  time  of  its  being  annexed  and  recorded  ;  and 
the  same  shall  thereafter  have  the  same  effect  in  law,  to  all  in- 
tents and  purposes,  as  though  it  had  been  embraced  in  the 
original  description  and  specification. 

SECTION  14.  And  be  it  further  enacted.  That  whenever,  in 
any  action  for  damages  for  making,  using,  or  selling  the  thing 
whereof  the  exclusive  right  is  secured  by  any  patent  heretofore 
granted,  or  by  any  patent  which  may  hereafter  be  granted,  a 
verdict  shall  be  rendered  for  the  plaintiff  in  such  action,  it 
shall  be  in  the  power  of  the  court  to  render  judgment  for  any 
sum  above  the  amount  found  by  such  verdict  as  the  actual 
damages  sustained  by  the  plaintiff,  not  exceeding  three  times 
the  amount  thereof,  according  to  the  circumstances  of  the  case, 
with  costs  ;  and  such  damages  may  be  recovered  by  .action  on 
the  case,  in  any  court  of  competent  jurisdiction,  to  be  brought 
in  the  name  or  names  of  the  person  or  persons  interested, 
whether  as  patentees,  assignees,  or  as  grantees  of  the  exclusive 
right  within  and  throughout  a  specified  part  of  the  United 
States. 

SECTION  15.  And  be  -it  further  enacted,  That  the  defendant 
in  any  such  action  shall  be  permitted  to  plead  the  general 
issue,  and  to  give  this  act  and  any  special  matter  in  evidence, 
of  which  notice  in  writing  may  have  been  given  to  the  plain- 
tiff or  his  attorney,  thirty  days  before  trial,  tending  to  prove 
that  the  description  and  specification  filed  by  the  plaintiff  does 
not  contain  the  whole  truth  relative  to  his  invention  or  dis- 
covery, or  that  it  contains  more  than  is  necessary  to  produce 
the  described  effect ;  which  concealment  or  addition  shall  fully 
appear  to  have  been  made  for  the  purpose  of  deceiving  the 
public,  or  that  the  patentee  was  not  the  original  and  first 
inventor  or  discoverer  of  the  thing  patented,  or  of  a  substantial 
and  material  part  thereof  claimed  as  new,  or  that  it  had  been 
described  in  some  public  work  anterior  to  the  supposed  dis- 
covery thereof  by  the  patentee,  or  had  been  in  public  use  or 
on  sale  witli  the  consent  and  allowance  of  the  patentee  before 
his  application  for  a  patent,  or  that  he  had  surreptitiously  or 


542  THE   PATENT   STATUTES. 

unjustly  obtained  the  patent  for  that  which  was  in  fact  invented 
or  discovered  by  another,  who  was  using  reasonable  diligence 
in  adapting  and  perfecting  the  same  ;  or  that  the  patentee,  if 
an  alien  at  the  time  the  patent  was  granted,  had  failed  and 
neglected,  for  the  space  of  eighteen  months  from  the  date  of 
the  patent,  to  put  and  continue  on  sale  to  the  public,  on  rea- 
sonable terms,  the  invention  or  discovery  for  which  the  patent 
issued  ;  in  either  of  which  cases  judgment  shall  be  rendered 
for  the  defendant  with  costs.  And  whenever  the  defendant 
relies  in  his  defence  on  the  fact  of  a  previous  invention, 
knowledge,  or  use  of  the  thing  patented,  he  shall  state,  in  his 
notice  of  special  matter,  the  names  and  places  of  residence  of 
those  whom  he  intends  to  prove  to  have  possessed  a  prior 
knowledge  of  the  thing,  and  where  the  same  had  been  used  : 
Provided  however,  That  whenever  it  shall  satisfactorily  appear 
that  the  patentee,  at  the  time  of  making  his  application  for 
the  patent,  believed  himself  to  be  the  first  inventor  or  discov- 
erer of  the  thing  patented,  the  same  shall  not  be  held  to  be 
void  on  account  of  the  invention  or  discovery  or  any  part 
thereof  having  been  before  known  or  used  in  any  foreign  coun- 
try, it  not  appearing  that  the  same  or  any  substantial  part 
thereof  had  before  been  patented  or  described  in  any  printed 
publication.  And  provided  also,  That  whenever  the  plaintiff 
shall  fail  to  sustain  his  action  on  the  ground  that  in  his  specifi- 
cation of  claim  is  embraced  more  than  that  of  which  he  was 
the  first  inventor,  if  it  shall  appear  that  the  defendant  had 
used  or  violated  any  part  of  the  invention  justly  and  truly 
specified  and  claimed  as  new,  it  shall  be  in  the  power  of  the 
court  to  adjudge  and  award  as  to  costs,  as  may  appear  to  be 
just  and  equitable. 

SECTION  16.  And  ~be  it  further  enacted,  That  whenever 
there  shall  be  two  interfering  patents,  or  whenever  a  patent 
on  application  shall  have  been  refused  on  an  adverse  decision 
of  a  board  of  examiners,  on  the  ground  that  the  patent  applied 
for  would  interfere  with  an  unexpired  patent  previously 
granted,  any  person  interested  in  any  such  patent,  either  by 
assignment  or  otherwise,  in  the  one  case,  and  any  such  appli- 
cant in  the  other  case,  may  have  remedy  by  bill  in  equity ; 


THE   PATENT   STATUTES.  543 

and  the  court  having  cognizance  thereof,  on  notice  to  adverse 
parties,  and  other  due  proceedings  had,  may  adjudge  and  de- 
clare either  the  patents  void  in  the  whole  or  in  part,  or  inoper- 
ative or  invalid  in  any  particular  part  or  portion  of  the  United 
States,  according  to  the  interest  which  the  parties  to  such  suit 
may  possess  in  the  patent  or  the  inventions  patented,  and  may 
also  adjudge  that  such  applicant  is  entitled,  according  to  the 
principles  and  provisions  of  this  act,  to  have  and  receive  a 
patent  for  his  invention,  as  specified  in  his  claim,  or  for  any 
part  thereof,  as  the  fact  of  priority  of  right  or  invention  shall 
in  any  such  case  be  made  to  appear.  And  such  adjudication, 
if  it  be  in  favor  of  the  right  of  such  applicant,  shall  authorize 
the  Commissioner  to  issue  such  patent,  on  his  filing  a  copy  of 
the  adjudication,  and  otherwise  complying  with  the  requisi- 
tions of  this  act.  Provided  however ',  That  no  such  judgment 
or  adjudication  shall  affect  the  rights  of  any  person  except  the 
parties  to  the  action  and  those  deriving  title  from  or  under 
them  subsequent  to  the  rendition  of  such  judgment. 

SECTION  17.  And  be  it  further  enacted,  That  all  actions, 
suits,  controversies,  and  cases  arising  under  any  law  of  the 
United  States,  granting  or  confirming  to  inventors  the  exclu- 
sive right  to  their  inventions  or  discoveries,  shall  be  originally 
cognizable,  as  well  in  equity  as  at  law,  by  the  circuit  courts 
of  the  United  States,  or  any  district  court  having  the  power 
and  jurisdiction  of  a  circuit  court ;  which  courts  shall  have 
power,  upon  a  bill  in  equity  filed  by  any  party  aggrieved,  in 
any  such  case,  to  grant  injunctions,  according  to  the  course 
and  principles  of  courts  of  equity,  to  prevent  the  violation  of 
the  rights  of  any  inventor  as  secured  to  him  by  any  law  of  the 
United  States,  on  such  terms  and  conditions  as  said  courts  may 
deem  reasonable  :  Provided  however,  That  from  all  judgments 
and  decrees  from  any  such  court  rendered  in  the  premises,  a 
writ  of  error  or  appeal,  as  the  case  may  require,  shall  lie  to 
the  Supreme  Court  of  the  United  States,  in  the  same  manner 
and  under  the  same  circumstances  as  is  now  provided  by  law 
in  other  judgments  and  decrees  of  circuit  courts,  and  in  all 
other  cases  in  which  the  court  shall  deem  it  reasonable  to  allow 
the  same. 


544:  THE    PATENT    STATUTES. 

SECTION  18.  And  be  it  further  enacted,  That  whenever 
any  patentee  of  an  invention  or  discovery  shall  desire  an  ex- 
tension of  his  patent  beyond  the  term  of  its  limitation,  he  may 
make  application  therefor,  in  writing,  to  the  Commissioner 
of  the  Patent  Office,  setting  forth  the  grounds  thereof  ;  and 
the  Commissioner  shall,  on  the  applicant's  paying  the  sum  of 
forty  dollars  to  the  credit  of  the  treasury,  as  in  the  case  of  an 
original  application  for  a  patent,  cause  to  be  published  in  one 
or  more  of  the  principal  newspapers  in  the  city  of  Washington, 
and  in  such  other  paper  or  papers  as  he  may  deem  proper, 
published  in  the  section  of  country  most  interested  adversely 
to  the  extension  of  the  patent,  a  notice  of  such  application  and 
of  the  time  and  place  when  and  where  the  same  will  be  con- 
sidered, that  any  person  may  appear  and  show  cause  why  the 
extension  should  not  be  granted.  And  the  Secretary  of  State, 
the  Commissioner  of  the  Patent  Office,  and  the  Solicitor  of 
the  Treasury  shall  constitute  a  board  to  hear  and  decide  upon 
the  evidence  produced  before  them  both  for  and  against  the 
extension,  and  shall  sit  for  that  purpose  at  the  time  and  place 
designated  in  the  published  notice  thereof.  The  patentee 
shall  furnish  to  said  board  a  statement,  in  writing,  under  oath, 
of  the  ascertained  value  of  the  invention,  and  of  his  receipts 
and  expenditures,  sufficiently  in  detail  to  exhibit  a  true  and 
faithful  account  of  loss  and  profit  in  any  manner  accruing  to 
him  from  and  by  reason  of  said  invention.  And  if,  upon  a 
hearing  of  the  matter,  it  shall  appear  to  the  full  and  entire 
satisfaction  of  said  board,  having  due  regard  to  the  public 
interest  therein,  that  it  is  just  and  proper  that  the  term  of  the 
patent  should  be  extended,  by  reason  of  the  patentee,  without 
neglect  or  fault  on  his  part,  having  failed  to  obtain,  from  the 
use  and  sale  of  his  invention,  a  reasonable  remuneration  for 
the  time,  ingenuity,  and  expense  bestowed  upon  the  same,  and 
the  introduction  thereof  into  use,  it  shall  be  the  duty  of  the 
Commissioner  to  renew  and  extend  the  patent,  by  making  a 
certificate  thereon  of  such  extension,  for  the  term  of  seven 
years  from  and  after  the  expiration  of  the  first  term  ;  which 
certificate,  with  a  certificate  of  said  board  of  their  judgment 


THE    PATENT    STATUTES.  545 

and  opinion  as  aforesaid,  shall  be  entered  on  record  in  the 
Patent  Office  ;  and  thereupon  the  said  patent  shall  have  the 
same  effect  in  law  as  though  it  had  been  originally  granted  for 
the  term  of  twenty-one  years.  And  the  benefit  of  such  re- 
newal shall  extend  to  assignees  and  grantees  of  the  right  to  use 
the  thing  patented,  to  the  extent  of  their  respective  interests 
therein  :  Provided  however.  That  no  extension  of  a  patent 
shall  be  granted  after  the  expiration  of  the  term  for  which  it 
was  originally  issued. 

SECTION  19.  And  fie  it  further  enacted,  That  there  shall  be 
provided  for  the  use  of  said  office,  a  library  of  scientific  works 
and  periodical  publications,  both  foreign  and  American,  calcu- 
lated to  facilitate  the  discharge  of  the  duties  hereby  required 
of  the  chief  officers  therein,  to  be  purchased  under  the  direc- 
tion of  the  Committee  of  the  Library  of  Congress.  And  the 
sum  of  fifteen  hundred  dollars  is  hereby  appropriated  for  that 
purpose,  to  be  paid  out  of  the  patent  fund. 

SECTION  20.  And  be  it  further  enacted,  That  it  shall  be  the 
duty  of  the  Commissioner  to  cause  to  be  classified  and  arranged, 
in  such  rooms  or  galleries  as  may  be  provided  for  that  purpose, 
in  suitable  cases,  when  necessary  for  their  preservation,  and  in 
such  manner  as  shall  be  conducive  to  a  beneficial  and  favorable 
display  thereof,  the  models  and  specimens  of  compositions  and 
of  fabrics  and  other  manufactures  and  works  of  art,  patented 
or  unpatented,  which  have  been,  or  shall  hereafter  be,  depos- 
ited in  said  office.  And  said  rooms  or  galleries  shall  be  kept 
open  during  suitable  hours  for  public  inspection. 

SECTION  21.  And  be  it  further  enacted,  That  all  acts  and 
parts  of  acts  heretofore  passed  on  this  subject  be,  and  the  same 
are  hereby  repealed  :  Provided  however,  That  all  actions  and 
processes  in  law  or  equity  sued  out  prior  to  the  passage  of  this 
act  may  be  prosecuted  to  final  judgment  and  execution,  in  the 
same  manner  as  though  this  act  had  not  been  passed,  excepting 
and  saving  the  application  to  any  such  action  of'thu  provisions 
of  the  fourteenth  and  fifteenth  sections  of  this  act,  so  far  as 
they  may  be  applicable  thereto  ;  And  provided  also,  That  all 
applications  or  petitions  for  patents,  pending  at  the  time  of  the 


546  THE   PATENT   STATUTES. 

passage  of  this  act,  in  cases  where  the  duty  has  been  paid,  shall 
be  proceeded  with  and  acted  on  in  the  same  manner  as  though 
filed  after  the  passage  hereof. 

APPROVED  July  4,  1836. 

Eepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT  ACT  OF  1837. 

5  STATUTES  AT  LARGE,  191. 

An  Act  in  addition  to   the  act  to  promote   the  progress   of 

science  and  useful  arts. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of 
Representatives  of  the  United  States  of  America  in  Congress 
assembled,  That  any  person  who  may  be  in  possession  of,  or  in 
any  way  interested  in,  any  patent  for  an  invention,  discovery, 
or  improvement,  issued  prior  to  the  fifteenth  day  of  December, 
in  the  year  of  our  Lord  one  thousand  eight  hundred  and  thirty- 
six,  or  in  an  assignment  of  any  patent,  or  interest  therein,  ex- 
ecuted and  recorded  prior  to  the  said  fifteenth  day  of  De- 
cember, may,  without  charge,  on  presentation  or  transmission 
thereof  to  the  Commissioner  of  Patents,  have  the  same  record- 
ed anew  in  the  Patent  Office,  together  with  the  descriptions, 
specifications  of  claim  and  drawings  annexed  or  belonging  to  the 
same  ;  and  it  shall  be  the  duty  of  the  Commissioner  to  cause 
the  same,  or  any  authenticated  copy  of  the  original  record, 
specification,  or  drawing  which  he  may  obtain*  to  be  transcribed 
and  copied  into  books  of  record  to  be  kept  for  that  purpose  ; 
and  wherever  a  drawing  was  not  originally  annexed  to  the 
patent  and  referred  to  in  the  specification,  any  drawing  pro- 
duced as  a  delineation  of  the  invention,  being  verified  by  oath 
in  such  manner  as  the  Commissioner  shall  require,  may  be  trans- 
mitted and  placed  on  file,  or  copied  as  aforesaid,  together  with 
certificate  of  the  oath  ;  or  such  drawings  may  be  made  in  the 
office,  under  the  direction  of  the  Commissioner,  in  conformity 
with  the  specification.  And  it  shall  be  the  duty  of  the  Com- 
missioner to  take  such  measures  as  may  be  advised  and  de- 
termined by  the  Board  of  Commissioners  provided  for  in  the 


THE   PATENT   STATUTES.  54:7 

fourth  section  of  this  act,  to  obtain  the  patents,  specifications, 
and  copies  aforesaid,  for  the  purpose  of  being  so  transcribed 
and  recorded.  And  it  shall  be  the  duty  of  each  of  the  several 
clerks  of  the  judicial  courts  of  the  United  States,  to  transmit  as 
soon  as  may  be,  to  the  Commissioner  of  the  Patent  Office,  a 
statement  of  all  the  authenticated  copies  of  patents,  descriptions, 
specifications,  and  drawings  of  inventions  and  discoveries  made 
and  executed  prior  to  the  aforesaid  fifteenth  day  of  December, 
which  may  be  found  on  the  files  of  his  office  ;  and  also  to  make 
out  and  transmit  to  said  Commissioner,  for  record  as  aforesaid, 
a  certified  copy  of  every  such  patent,  description,  specification, 
or  drawing,  which  shall  be  specially  required  by  said  Com- 
missioner. 

SECTION  2.  And  be  it  further  enacted,  That  copies  of  such 
record  and  drawings,  certified  by  the  Commissioner,  or,  in  his 
absence,  by  the  chief  clerk,  shall  be  primd  facie  evidence  of 
the  particulars  of  the  invention  and  of  the  patent  granted 
therefor  in  any  judicial  court  of  the  United  States,  in  all  cases 
where  copies  of  the  original  record  or  specification  and  draw- 
ings would  be  evidence,  without  proof  of  the  loss  of  such  orig- 
inals ;  and  no  patent  issued  prior  to  the  aforesaid  fifteenth  day  of 
December  shall,  after  the  first  day  of  June  next,  be  received 
in  evidence  in  any  of  the  said  courts  in  behalf  of  the  patentee 
or  other  person  who  shall  be  in  possession  of  the  same,  unless  it 
shall  have  been  so  recorded  anew,  and  a  drawing  of  the  in- 
vention, if  separate  from  the  patent,  verified  as  aforesaid,  de- 
posited in  the  Patent  Office  ;  nor  shall  any  written  assignment 
of  any  such  patent,  executed  and  recorded  prior  to  the  said 
fifteenth  day  of  December,  be  received  in  evidence  in  any  of 
the  said  courts  in  behalf  of  the  assignee  or  other  person  in  pos- 
session thereof,  until  it  shall  have  been  so  recorded  anew. 

SECTION  3.  And  be  it  further  enacted,  That  whenever  it  shall 
appear  to  the  Commissioner  that  any  patent  was  destroyed  by 
the  burning  of  the  Patent  Office  building  on  the  aforesaid 
fifteenth  day  of  December,  or  was  otherwise  lost  prior  thereto, 
it  shall  be  his  duty,  on  application  therefor  by  the  patentee  or 
other  person  interested  therein,  to  issue  a  new  patent  for  the 
same  invention  or  discovery,  bearing  the  date  of  the  original 


548  THE    PATENT    STATUTES. 

patent,  with  his  certificate  thereon  that  it  was  made  and  issued 
pursuant  to  the  provisions  of  the  third  section  of  this  act,  and 
shall  enter  the  same  of  record  :  Provided  however,  That  be- 
fore such  patent  shall  be  issued  the  applicant  therefor  shall  de- 
posit in  the  Patent  Office  a  duplicate,  as  near  as  may  be,  of  the 
original  model,  drawings,  and  description,  with  specification 
of  the  invention  or  discovery,  verified  by  oath,  as  shall  be  re- 
quired by  the  Commissioner ;  and  such  patent,  and  copies  of 
such  drawings  and  descriptions,  duly  certified,  shall  be  ad- 
missible as  evidence  in  any  judicial  court  of  the  United  States, 
and  shall  protect  the  rights  of  the  patentee,  his  administrators, 
heirs,  and  assigns,  to  the  extent  only  in  which  they  would 
have  been  protected  by  the  original  patent  and  specifica- 
tion. 

SECTION  4.  And  be  it  further  enacted,  That  it  shall  be  the 
duty  of  the  Commissioner  to  procure  a  duplicate  of  such  of  the 
models,  destroyed  by  fire  on  the  aforesaid  fifteenth  day  of 
December,  as  were  most  valuable  and  interesting,  and  whose 
preservation  would  be  important  to  the  public  ;  and  such  as 
would  be  necessary  to  facilitate  the  just  discharge  of  the  duties 
imposed  by  law  on  the  Commissioner  in  issuing  patents,  and  to 
protect  the  rights  of  the  public  and  of  patentees  in  patented 
inventions  and  improvements  :  Provided,  That  a  duplicate  of 
such  models  may  be  obtained  at  a  reasonable  expense  :  And 
provided  also,  That  the  whole  amount  of  expenditure  for  this 
purpose  shall  not  exceed  the  sum  of  one  hundred  thousand 
dollars.  And  there  shall  be  a  temporary  board  of  Commis- 
sioners, to  be  composed  of  the  Commissioner  of  the  Patent 
Office  and  two  other  persons  to  be  appointed  by  the  President, 
whose  duty  it  shall  be  to  consider  and  determine  upon  the  best 
and  most  judicious  mode  of  obtaining  models  of  suitable  con- 
struction ;  and  also  to  consider  and  determine  what  models  may 
be  procured  in  pursuance  of,  and  in  accordance  with,  the  pro- 
visions and  limitations  in  this  section  contained.  And  said 
commissioners  may  make  and  establish  all  such  regulations, 
terms,  and  conditions,  not  inconsistent  with  law,  as  in  their 
opinion  may  be  proper  and  necessary  to  carry  the  provisions  of 
this  section  into  effect,  according  to  its  true  intent. 


THE    PATENT    STATUTES.  549 

SECTION  5.  And  be  it  further  enacted,  That,  whenever  a 
patent  shall  be  returned  for  correction  and  reissue  under  the 
thirteenth  section  of  the  act  to  which  this  is  additional,  and  the 
patentee  shall  desire  several  patents  to  be  issued  for  distinct 
and  separate  parts  of  the  thing  patented,  he  shall  first  pay,  in 
manner  and  in  addition  to  the  sum  provided  by  that  act,  the 
sum  of  thirty  dollars  for  each  additional  patent  so  to  be  issued  : 
Provided  however,  That  no  patent  made  prior  to  the  aforesaid 
fifteenth  day  of  December  shall  be  corrected  and  reissued  until 
a  duplicate  of  the  model  and  drawing  of  the  thing  as  originally 
invented,  verified  by  oath  as  shall  be  required  by  the  Commis- 
sioner, shall  be  deposited  in  the  Patent  Office  : 

Nor  shall  any  addition  of  an  improvement  be  made  to  any 
patent  heretofore  granted,  nor  any  new  patent  be  issued  for  an 
improvement  made  in  any  machine,  manufacture,  or  process, 
to  the  original  inventor,  assignee,  or  possessor  of  a  patent 
therefor,  nor  any  disclaimer  be  admitted  to  record,  until  a 
duplicate  model  and  drawing  of  the  thing  originally  intended, 
verified  as  aforesaid,  shall  have  been  deposited  in  the  Patent 
Office,  if  the  Commissioner  shall  require  the  same  ;  nor  shall 
any  patent  be  granted  for  an  invention,  improvement,  or  dis- 
covery, the  model  or  drawing  of  which  shall  have  been  lost, 
until  another  model  and  drawing,  if  required  by  the  Commis- 
sioner, shall,  in  like  manner,  be  deposited  in  the  Patent 
Office. 

And  in  all  such  cases,  as  well  as  in  those  which  may  arise 
under  the  third  section  of  this  act,  the  question  of  compensa- 
tion for  such  models  and  drawings  shall  be  subject  to  the  judg- 
ment and  decision  of  the  Commissioners,  provided  for  in  the 
fourth  section,  under  the  same  limitations  and  restrictions  as 
are  therein  prescribed. 

SECTION  6.  And  be  it  further  enacted,  That  any  patent 
hereafter  to  be  issued  may  be  made  and  issued  to  the  assignee 
or  assignees  of  the  inventor  or  discoverer,  the  assignment 
thereof  being  first  entered  of  record,  and  the  application 
therefor  being  duly  made,  and  the  specification  duly  sworn  to 
by  the  inventor.  And  in  all  cases  hereafter,  the  applicant 
for  a  patent  shall  be  held  to  furnish  duplicate  drawings,  when- 


550  THE    PATENT    STATUTES. 

ever  the  case  admits  of  drawings,  one  of  which  to  be  deposited 
in  the  office,  and  the  other  to  be  annexed  to  the  patent,  and 
considered  a  part  of  the  specification. 

SECTION  T.  And  be  it  further  enacted,  That,  whenever  any 
patentee  shall  have,  through  inadvertence,  accident,  or  mis- 
take, made  his  specification  of  claim  too  broad,  claiming  more 
than  that  of  which  he  was  the  original  or  first  inventor,  some 
material  or  substantial  part  of  the  thing  patented  being  truly 
and  justly  his  own,  any  such  patentee,  his  administrators,  ex- 
ecutors, and  assigns,  whether  of  the  whole  or  of  a  sectional 
interest  therein,  may  make  disclaimer  of  suet  parts  of  the 
thing  patented  as  the  disclaimant  shall  not  claim  to  hold  by 
virtue  of  the  patent  or  assignment,  stating  therein  the  extent 
of  his  interest  in  such  patent ;  which  disclaimer  shall  be  in 
writing,  attested  by  one  or  more  witnesses,  and  recorded  in  the 
Patent  Office,  on  payment  by  the  person  disclaiming  in  manner 
as  other  patent  duties  are  required  by  law  to  be  paid,  of  the 
sum  of  ten  dollars.  And  such  disclaimer  shall  thereafter  be 
taken  and  considered  as  part  of  the  original  specification,  to 
the  extent  of  the  interest  which  shall  be  possessed  in  the  patent 
or  right  secured  thereby,  by  the  disclaimant,  and  by  those 
claiming  by  or  under  him  subsequent  to  the  record  thereof. 
But  no  such  disclaimer  shall  affect  any  action  pending  at  the 
time  of  its  being  filed,  except  so  far  as  may  relate  to  the 
question  of  unreasonable  neglect  or  delay  in  filing  the  same. 

SECTION  8.  And  be  it  further  enacted,  That,  whenever 
application  shall  be  made  to  the  Commissioner  for  any  addition 
of  a  newly  discovered  improvement  to  be  made  to  an  existing 
patent,  or  whenever  a  patent  shall  be  returned  for  correction 
and  reissue,  the  specification  of  claim  annexed  to  every  such 
patent  shall  be  subject  to  revision  and  restriction,  in  the  same 
manner  as  are  original  applications  for  patents  ;  the  Commis- 
sioner shall  not  add  any  such  improvement  to  the  patent  in 
the  one  case,  nor  grant  the  reissue  in  the  other  case,  until  the 
applicant  shall  have  entered  a  disclaimer,  or  altered  his  speci- 
fication of  claim  in  accordance  with  the  decision  of  the  Commis- 
sioner ;  and  in  all  such  cases,  the  applicant,  if  dissatisfied  with 
such  decision,  shall  have  the  same  remedy,  and  be  entitled  to 


THE   PATENT   STATUTES.  551 

the  benefit  of  the  same  privileges  and  proceedings  as  are  pro- 
vided by  law  in  the  case  of  original  applications  for  patents. 

SECTION  9.  And  be  it  further  enacted,  any  thing  in  the 
fifteenth  section  of  the  act  to  which  this  is  additional  to  the 
contrary  notwithstanding,  That,  whenever  by  mistake,  acci- 
dent, or  inadvertence,  and  without  any  wilful  default  or  intent 
to  defraud  or  mislead  the  public,  any  patentee  shall  have  in 
his  specification  claimed  to  be  the  original  and  first  inventor  or 
discoverer  of  any  material  or  substantial  part  of  the  thing 
patented,  of  which  he  was  not  the  first  and  original  inventor, 
and  shall  have  no  legal  or  just  right  to  claim  the  same,  in  every 
such  case  the  patent  shall  be  deemed  good  and  valid  for  so 
much  of  the  invention  or  discovery  as  shall  be  truly  and  bond 
fide  his  own  ;  Provided,  It  shall  be  a  material  and  substantial 
part  of  the  thing  patented,  and  be  definitely  distinguishable 
from  the  other  parts  so  claimed  without  right  as  aforesaid. 
And  every  such  patentee,  his  executors,  administrators,  and 
assigns,  whether  of  the  whole,  or  of  a  sectional  interest  there- 
in, shall  be  entitled  to  maintain  a  suit  at  law  or  in  equity  on 
such  patent  for  any  infringement  of  such  part  of  the  invention 
or  discovery  as  shall  be  bond  fide  his  own  as  aforesaid,  not- 
withstanding the  specification  may  embrace  more  than  he  shall 
have  any  legal  right  to  claim.  But,  in  every  such  case  in 
which  a  judgment  or  verdict  shall  be  rendered  for  the  plaintiff, 
he  shall  not  be  entitled  to  recover  costs  against  the  defendant, 
unless  he  shall  have  entered  at  the  Patent  Office,  prior  to  the 
commencement  of  the  suit,  a  disclaimer  of  all  that  part  of  the 
thing  patented  which  was  so  claimed  without  right.  Provided 
however,  That  no  person  bringing  any  such  suit  shall  be  entitled 
to  the  benefits  of  the  provisions  contained  in  this  section,  who 
shall  have  unreasonably  neglected  or  delayed  to  enter  at  the 
Patent  Office  a  disclaimer  as  aforesaid. 

SECTION  10.  And  be  it  further  enacted.  That  the  Commis- 
sioner is  hereby  authorized  and  empowered  to  appoint  agents, 
in  not  exceeding  twenty  of  the  principal  cities  or  towns  in  the 
United  States  as  may  best  accommodate  the  different  sections 
of  the  country,  for  the  purpose  of  receiving  and  forwarding 
to  the  Patent  Office  all  such  models,  specimens  of  ingredients 


552  THE    PATENT    STATUTES. 

and  manufactures,  as  shall  be  intended  to  be  patented  or  de- 
posited therein,  the  transportation  of  the  same  to  be  charge- 
able to  the  patent  fund. 

SECTION  11.  And  be  it  further  enacted.  That,  instead  of 
one  examining  clerk,  as  provided  by  the  second  section  of  the 
act  to  which  this  is  additional,  there  shall  be  appointed,  in 
manner  therein  provided,  two  examining  clerks,  each  to  receive 
an  annual  salary  of  fifteen  hundred  dollars  ;  and  also,  an  addi- 
tional copying  clerk,  at  an  annual  salary  of  eight  hundred 
dollars.  And  the  Commissioner  is  also  authorized  to  employ, 
from  time  to  time,  as  many  temporary  clerks  as  may  be  neces- 
sary to  execute  the  copying  and  draughting  required  by  the 
first  section  of  this  act,  and  to  examine  and  compare  the  records 
with  the  originals,  who  shall  receive  not  exceeding  seven  cents 
for  every  page  of  one  hundred  words,  and  for  drawings  and 
comparison  of  records  with  originals,  such  reasonable  compen- 
sation as  shall  be  agreed  upon  or  prescribed  by  the  Commis- 
sioner. 

SECTION  12.  And  be  it  further  enacted,  That,  wherever  the 
application  of  any  foreigner  for  a  patent  shall  be  rejected  and 
withdrawn  for  want  of  novelty  in  the  invention,  pursuant  to 
the  seventh  section  of  the  act  to  which  this  is  additional,  the 
certificate  thereof  of  the  Commissioner  shall  be  a  sufficient 
warrant  to  the  treasurer  to  pay  back  to  such  applicant  two 
thirds  of  the  duty  he  shall  have  paid  into  the  treasury  on  ac- 
count of  such  application. 

SECTION  13.  And  be  it  further  enacted,  That  in  all  cases  in 
which  an  oath  is  required  by  this  act,  or  by  the  act  to  which 
this  is  additional,  if  the  person  of  whom  it  is  required  shall  be 
conscientiously  scrupulous  of  taking  an  oath,  affirmation  may 
be  substituted  therefor. 

SECTION  14.  And  be  it  further  enacted,  That  all  moneys 
paid  into  the  treasury  of  the  United  States  for  patents  and  for 
fees  for  copies  furnished  by  the  Superintendent  of  the  Patent 
Office  prior  to  the  passage  of  the  act  to  which  this  is  additional, 
shall  be  carried  to  the  credit  of  the  patent  fund  created  by  said 
act  ;  and  the  moneys  constituting  said  fund  shall  be,  and  the 
same  are  hereby,  appropriated  for  the  payment  of  the  salaries 


THE    PATENT    STATUTES.  553 

of  the  officers  and  clerks  provided  for  by  said  act,  and  all  other 
expenses  of  the  Patent  Office,  including  all  the  expenditures 
provided  for  by  this  act ;  and  also  for  such  other  purposes  as 
are  or  may  be  hereafter  specially  provided  for  by  law.  And 
the  Commissioner  is  hereby  authorized  to  draw  upon  said  fund, 
from  time  to  time,  for  such  sums  as  shall  be  necessary  to  carry 
into  effect  the  provisions  of  this  act,  governed,  however,  by 
the  several  limitations  herein  contained.  And  it  shall  be  his 
duty  to  lay  before  Congress,  in  the  month  of  January,  annually, 
a  detailed  statement  of  the  expenditures  and  payments  by  him 
made  from  said  fund  ;  And  it  shall  also  be  his  duty  to  lay  be- 
fore Congress,  in  the  month  of  January,  annually,  a  list  of  all 
patents  which  shall  have  been  granted  during  the  preceding 
year,  designating,  under  proper  heads,  the  subjects  of  such 
patents,  and  furnishing  an  alphabetical  list  of  the  patentees, 
with  their  places  of  residence  ;  and  he  shall  also  furnish  a  list 
of  all  patents  which  shall  have  become  public  property  during 
the  same  period  ;  together  with  such  other  information  of  the 
state  and  condition  of  the  Patent  Office  as  may  be  useful  to 
Congress  or  the  public. 

APPKOVED  March  3,  1837. 

Kepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230v 
Section  111,  p.  216. 

PATENT    AOT    OF  1839. 

5  STATUTES  AT  LARGE,  353. 

An  Act  in  addition  to  "  An  act  to  promote  the  progress  of  the 

useful  arts." 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  there  shall  be  appointed,  in  manner  provided  in 
the  second  section  of  the  act  to  which  this  is  additional,  two  as- 
sistant examiners,  each  to  receive  an  annual  salary  of  twelve 
hundred  and  fifty  dollars. 

SECTION  2.  And  be  it  further  enacted,  That  the  Commissioner 
be  authorized  to  employ  temporary  clerks  to  do  any  necessary 
transcribing,  whenever  the  current  business  of  the  office  requires 


554  THE    PATENT    STATUTES. 

it ;  Provided  however,  That  instead  of  salary,  a  compensation 
shall  be  allowed,  at  a  rate  not  greater  than  is  charged  for  copies 
now  furnished  by  the  office. 

SECTION  3.  And  be  it  further  enacted,  That  the  Commissioner 
is  hereby  authorized  to  publish  a  classified  and  alphabetical  list 
of  all  patents  granted  by  the  Patent  Office  previous  to  said 
publication,  and  retain  one  hundred  copies  for  the  Patent 
Office  and  nine  hundred  copies  to  be  deposited  in  the  library 
of  Congress,  for  such  distribution  as  may  be  hereafter  directed  ; 
and  that  one  thousand  dollars,  if  necessary,  be  appropriated, 
out  of  the  patent  fund,  to  defray  the  expense  of  the  same. 

SECTION  4.  And  be  it  further  enacted,  That  the  sum  of 
three  thousand  six  hundred  and  fifty-nine  dollars  and  twenty- 
two  cents  be,  and  is  hereby,  appropriated  from  the  patent  fund, 
to  pay  for  the  use  and  occupation  of  rooms  in  the  City  Hall  by 
the  Patent  Office. 

SECTION  5.  And  be  it  further  enacted,  That  the  sum  of 
one  thousand  dollars  be  appropriated  from  the  patent  fund,  to 
be  expended  under  the  direction  of  the  Commissioner,  for 
the  purchase  of  necessary  books  for  the  library  of  the  Patent 
Office. 

SECTION  6.  And  he  it  further  enacted,  That  no  person  shall 
be  debarred  from  receiving  a  patent  for  any  invention  or  dis- 
covery, as  provided  in  the  act  approved  on  the  fourth  day  of 
July,  one  thousand  eight  hundred  and  thirty-six,  to  which  this 
is  additional,  by  reason  of  the^same  having  been  patented  in  a 
foreign  country  more  than  six  months  prior  to  his  application  : 
Provided,  That  the  same  shall  not  have  been  introduced  into 
public  and  common  use  in  the  United  States,  prior  to  the  ap- 
plication for  such  patent :  And  provided  also,  That  in  all  cases 
every  such  patent  shall  be  limited  to  the  term  of  fourteen  years 
from  the  date  or  publication  of  such  foreign  letters-patent. 

SECTION  7.  And  he  it  further  enacted,  That  every  person  or 
corporation  who  has,  or  shall  have,  purchased  or  constructed 
any  newly  invented  machine,  manufacture,  or  composition  of 
matter,  prior  to  the  application  by  the  inventor  or  discoveret 
for  a  patent,  shall  be  held  to  possess  the  right  to  use,  and  vend 
to  others  to  be  used,  the  specific  machine,  manufacture,  oi 


THE    PATENT    STATUTES.  555 

composition  of  matter  so  made  or  purchased,  without  liability 
therefor  to  the  inventor,  or  any  other  person  interested  in  such 
invention  ;  and  no  patent  shall  be  held  to  be  invalid,  by  reason  of 
such  purchase,  sale,  or  use  prior  to  the  application  for  a  patent  as 
aforesaid,  except  on  proof  of  abandonment  of  such  invention 
to  the  public  ;  or  that  such  purchase,  sale,  or  prior  use  has 
been  for  more  than  two  years  prior  to  such  application  for  a 
patent. 

SECTION  8.  And  be  it  further  enacted,  That  so  much  of  the 
eleventh  section  of  the  above  recited  act  as  requires  the  payment 
of  three  dollars  to  the  Commissioner  of  Patents  for  recording 
any  assignment,  grant,  or  conveyance  of  the  whole  or  any  part 
of  the  interest  or  right  under  any  patent,  be,  and  the  same  is 
hereby,  repealed  ;  and  all  such  assignments,  grants,  and  convey- 
ances shall,  in  future,  be  recorded,  without  any  charge  what- 
ever. 

SECTION  10.  And  be  it  further  enacted,  That  the  provisions 
of  the  sixteenth  section  of  the  before -recited  act  shall  extend 
to  all  cases  where  patents  are  refused  for  any  reason  whatever, 
either  by  the  Commissioner  of  Patents  or  by  the  Chief  Justice 
of  the  District  of  Columbia,  upon  appeals  from  the  decision  of 
said  Commissioner,  as  well  as  where  the  same  shall  have  been 
refused  on  account  of,  or  by  reason  of,  interference  with  a  pre- 
viously existing  patent ;  and  in  all  cases  where  there  is  no  op- 
posing party,  a  copy  of  the  bill  shall  be  served  upon  the  Com- 
missioner of  Patents,  when  the  whole  of  the  expenses  of  the 
proceeding  shall  be  paid  by  the  applicant,  whether  the  final 
decision  shall  be  in  his  favor  or  otherwise. 

SECTION  11.  And  be  it  further  enacted,  That  in  all  cases 
where  an  appeal  is  now  allowed  by  law  from  the  decision  of  the 
Commissioner  of  Patents  to  a  board  of  examiners,  provided  for 
in  the  seventh  section  of  the  act  to  which  this  is  additional,  the 
party,  instead  thereof,  shall  have  a  right  to  appeal  to  the 
Chief  Justice  of  the  district  court  of  the  United  States  for  the 
District  of  Columbia,  by  giving  notice  thereof  to  the  Commis- 
sioner, and  filing  in  the  Patent  Office,  within  such  time  as  the 
Commissioner  shall  appoint,  his  reasons  of  appeal  specifically 
get  forth  in  writing,  and  also  paying  into  the  Patent  Office,  to 


556  THE   PATENT    STATUTES. 

the  credit  of  the  patent  fund,  the  sum  of  twenty-five  dollars,, 
And  it  shall  be  the  duty  of  said  Chief  Justice,  on  petition,  to 
hear  and  determine  all  such  appeals,  and  to  revise  such  decisions 
in  a  summary  way,  on  the  evidence  produced  before  the  Com- 
missioner, at  such  early  and  convenient  time  as  he  may  appoint, 
first  notifying  the  Commissioner  of  the  time  and  place  of  hear- 
ing, whose  duty  it  shall  be  to  give  notice  thereof  to  all  parties 
who  appear  to  be  interested  therein,  in  such  manner  as  said 
judge  shall  prescribe.  The  Commissioner  shall  also  lay  before 
the  said  judge  all  the  original  papers  and  evidence  in  the  case, 
together  with  the  grounds  of  his  decision,  fully  set  forth  in 
writing,  touching  all  the  points  involved  by  the  reasons  of 
appeal,  to  which  the  revision  shall  be  confined.  And  at  the 
request  of  any  party  interested,  or  at  the  desire  of  the  judge, 
the  Commissioner  and  the  examiners  in  the  Patent  Office  may  be 
examined  under  oath,  in  explanation  of  the  principles  of  the 
machine  or  other  thing  for  which  a  patent,  in  such  case  is 
prayed  for.  And  it  shall  be  the  duty  of  said  judge,  after  a  hear- 
ing of  any  such  case,  to  return  all  the  papers  to  the  Commis- 
sioner, with  a  certificate  of  his  proceedings  and  decision,  which 
shall  be  entered  of  record  in  the  Patent  Office  ;  and  such  de- 
cision, so  certified,  shall  govern  the  further  proceedings  of  the 
Commissioner  in  such  case  :  Provided  however,  That  no  opinion 
or  decision  of  the  judge  in  any  such  case  shall  preclude  any 
person  interested  in  favor  or  against  the  validity  of  any  patent 
which  has  been  or  may,  hereafter  be  granted  from  the  right  to 
contest  the  same  in  any  judicial  court,  in  any  action  in  wliich 
its  validity  may  come  in  question. 

SECTION  12.  And  be  it  further  enacted.  That  the  Commis- 
sioner of  Patents  shall  have  power  to  make  all  such  regulations, 
in  respect  to  the  taking  of  evidence  to  be  used  in  contested 
cases  before  him,  as  maybe  just  and  reasonable.  And  so  much 
of  the  act  to  which  this  is  additional,  as  provides  for  a  board 
of  examiners,  is  hereby  repealed. 

SECTION  13.  And  be  it  further  enacted,  That  there  be  paid 
annually,  out  of  the  patent  fund,  to  the  said  Chief  Justice,  in 
consideration  of  the  duties  herein  imposed,  the  sum  of  one 
hundred  dollars. 


THE    PATENT    STATUTES.  557 

APPROVED  March  3,  1839. 

Eepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT    ACT   OF    1842. 
5  STATUTES  AT  LARGE,  543. 

An  Act  in  addition  to  an  act  to  promote  the  progress  of  the 
useful  arts,  and  to  repeal  all  acts  and  parts  of  acts  hereto- 
fore made  for  that  purpose. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep. 
resentatives  of  the  United  States  of  America  in  Congress  as- 
sembled, That  the  Treasurer  of  the  United  States  be,  and  he 
hereby  is,  authorized  to  pay  back,  out  of  the  patent  fund,  any 
sum  or  sums  of  money,  to  any  person  who  shall  have  paid  the 
same  into  the  Treasury,  or  to  any  receiver  or  depositary  to  the 
credit  of  the  Treasurer,  as  for  fees  accruing  at  the  Patent 
Office  through  mistake,  and  which  are  not  provided  to  be  paid 
by  existing  laws,  certificate  thereof  being  made  to  the  said 
Treasurer  by  the  Commissioner  of  Patents. 

SECTION  2.  And  be  it  further  enacted,  That  the  third  section 
of  the  act  of  March,  eighteen  hundred  and  thirty -seven,  which 
authorizes  the  renewing  of  patents  lost  prior  to  the  fifteenth  of 
December,  eighteen  hundred  and  thirty-six,  is  exte'nded  to 
patents  granted  prior  to  said  fifteenth  day  of  December,  though 
they  may  have  been  lost  subsequently  :  Provided  however, 
The  same  shall  not  have  been  recorded  anew  under  the  provi- 
sions of  said  act. 

SECTION  3.  And  be  it  further  enacted,  That  any  citizen  or 
citizens,  or  alien  or  aliens,  having  resided  one  year  in  the  United 
States,  and  taken  the  oath  of  his  or  their  intention  to  become 
a  citizen  or  citizens,  who  by  his,  her,  or  their  own  industry, 
genius,  efforts,  and  expense,  may  have  invented  or  pro- 
duced any  new  and  original  design  for  a  manufacture, 
whether  of  metal  or  other  material  or  materials,  or  any  new 
and  original  design  for  the  printing  of  woollen,  silk,  cotton,  or 
other  fabrics,  or  any  new  and  original  design  for  a  bust,  statue, 
or  bas-relief  or  composition  in  alto  or  basso  relievo,  or  any  new 


558  THE    PATENT    STATUTES. 

and  original  impression  or  ornament,  or  to  be  placed  on  any 
article  of  manufacture,  the  same  being  formed  in  marble  or 
other  material,  or  any  new  and  useful  pattern,  or  print,  or 
picture,  to  be  either  worked  into  or  worked  on,  or  printed  or 
painted  or  cast  or  otherwise  fixed  on,  any  article  of  manu- 
facture, or  any  new  and  original  shape  or  configuration  of  any 
article  of  manufacture  not  known  or  used  by  others  before  his, 
her,  or  their  invention  or  production  thereof,  and  prior  to  the 
time  of  his,  her,  or  their  application  for  a  patent  therefor,  and 
who  shall  desire  to  obtain  an  exclusive  property  or  right  therein 
to  make,  use.  and  sell  and  vend  the  same,  or  copies  of  the  same, 
to  others,  by  them  to  be  made,  used,  and  sold,  may  make  ap- 
plication in  writing  to  the  Commissioner  of  Patents  expressing 
such  desire,  and  the  Commissioner,  on  due  proceedings  had, 
may  grant  a  patent  therefor,  as  in  the  case  now  of  application 
for  a  patent :  Provided,  That  the  fee  in  such  cases,  which  by 
the  now  existing  laws  would  be  required  of  the  particular  ap- 
plicant, shall  be  one  half  the  sum,  and  that  the  duration  of 
said  patent  shall  be  seven  years,  and  that  all  the  regulations  and 
provisions  which  now  apply  to  the  obtaining  or  protection  of 
patents  not  inconsistent  with  the  provisions  of  this  act  shall 
apply  to  applications  under  this  section. 

SECTION  4.  And  l>e  it  further  enacted,  That  the  oath  required 
for  applicants  for  patents  may  be  taken,  when  the  applicant  is 
not,  for  the  time  being,  residing  in  the  United  States,  before 
any  minister,  plenipotentiary,  charge  d'affaires,  consul,  or 
commercial  agent  holding  commission  under  the  government 
of  the  United  States,  or  before  any  notary  public  of  the  foreign 
country  in  which  such  applicant  may  be. 

SECTION  5.  And  he  it  further  enacted,  That  if  any  person  or 
persons  shall  paint  or  print  or  mould,  cast,  carve,  or  engrave, 
or  stamp,  upon  anything  made,  used,  or  sold,  by  him,  for 
the  sole  making  or  selling  which  he  hath  not  or  shall  not  have 
obtained  letters-patent,  the  name  or  any  imitation  of  the 
name  of  any  other  person  who  hath  or  shall  have  obtained 
letters-patent  for  the  sole  making  and  vending  of  such  thing, 
without  consent  of  such  patentee,  or  his  assigns  or  legal  rep- 
resentatives ;  or  if  any  person,  upon  any  such  thing  not  having 


THE   PATENT    STATUTES.  559 

been  purchased  from  the  patentee,  or  some  person  who  pur- 
chased  it  from  or  under  such  patentee,or  not  haying  the  license  or 
consent  of  such  patentee,  or  his  assigns  or  legal  representatives, 
shall  write,  paint,  print,  mould,  cast,  carve,  engrave,  stamp, 
or  otherwise  make  or  affix  the  word  ' '  patent, ' '  or  the  words 
"letters-patent,"  or  the  word  "patentee,"  or  any  word  or 
words  of  like  kind,  meaning,  or  import,  with  the  view  or  in- 
tent of  imitating  or  counterfeiting  the  stamp,  mark,  or  other 
device,  of  the  patentee,  or  shall  affix  the  same,  or  any  word, 
stamp,  or  device,  of  like  import,  on  any  unpatented  article,  for 
the  purpose  of  deceiving  the  public,  he,  she,  or  they,  so  of- 
fending, shall  be  liable  for  such  offence  to  a  penalty  of  not  less 
than  one  hundred  dollars,  with  costs,  to  be  recovered  by  action 
in  any  of  the  circuit  courts  of  the  United  States,  or  in  any  of 
the  district  courts  of  the  United  States  having  the  powers  and 
jurisdiction  of  a  circuit  court  ;  one  half  of  which  penalty,  as 
recovered,  shall  be  paid  to  the  patent  fund,  and  the  other  half 
to  any  person  or  persons  who  shall  sue  for  the  same. 

SECTION  6.  And  be  it  further  enacted,  That  all  patentees 
and  assignees  of  patents  hereafter  granted  are  hereby  required 
to  stamp,  engrave,  or  cause  to  be  stamped  or  engraved,  on 
each  article  vended,  or  offered  for  sale,  the  date  of  the  patent ; 
and  if  any  person  or  persons,  patentees,  or  assignees,  shall 
neglect  to  do  so,  he,  she,  or  they  shall  be  liable  to  the  same 
penalty,  to  be  recovered  and  disposed  of  in  the  manner  speci- 
fied in  the  foregoing  fifth  section  of  this  act. 

APPROVED  August  29,  1842.  » 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 


PATENT  ACT  OF  1848. 
9  STATUTES  AT  LARGE,  231. 

An  Act  to  provide  additional  Examiners  in  the  Patent  Office, 
and  for  other  Purposes. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress  as- 


560  THE    PATENT    STATUTES. 

sembled,  That  there  shall  be  appointed,  in  the  manner  provided 
in  the  second  sqction  of  the  act  entitled  "An  Act  to  promote 
the  progress  of  useful  arts,  and  to  repeal  all  acts  and  parts  of 
acts  heretofore  made  for  that  purpose,"  approved  July  fourth, 
eighteen  hundred  and  thirty-six,  two  principal  examiners,  and 
two  assistant  examiners,  in  addition  to  the  number  of  ex- 
aminers now  employed  in  the  Patent  Office  ;  and  that  hereafter 
each  of  the  principal  examiners  employed  in  the  Patent  Office 
shall  receive  an  annual  salary  of  twenty-five  hundred  dollars, 
and  each  of  the  assistant  examiners  an  annual  salary  of  fifteen 
hundred  dollars  :  Provided,  That  the  power  to  extend  patents, 
now  vested  in  the  board  composed  of  the  Secretary  of  State, 
Commissioner  of  Patents,  and  Solicitor  of  the  Treasury,  by  the 
eighteenth  section  of  the  act  approved  July  fourth,  eighteen 
hundred  and  thirty-six,  respecting  the  Patent  Office,  shall  here- 
after be  vested  solely  in  the  Commissioner  of  Patents ;  and 
when  an  application  is  made  to  him  for  the  extension  -of  a 
patent  according  to  said  eighteenth  section,  and  sixty  days' 
notice  given  thereof,  he  shall  refer  the  case  to  the  principal 
examiner  having  charge  of  the  class  of  inventions  to  which  said 
case  belongs,  who  shall  make  full  report  to  said  Commissioner 
of  the  said  case,  and  particularly  whether  the  invention  or  im- 
provement secured  in  the  patent  was  new  and  patentable  when 
patented  ;  and  thereupon  the  said  Commissioner  shall  grant  or 
refuse  the  extension  of  said  patent,  upon  the  same  principles 
and  rules  that  have  governed  said  board  ;  but  no  patent  shall 
'be  extended  for  a  longer  term  than  seven  years. 

SECTION  2.  And  be  it  further  enacted,  That  hereafter  the 
Commissioner  of  Patents  shall  require  a  fee  of  one  dollar  for 
recording  any  assignment,  grant,  or  conveyance  of  the  whole 
or  any  part  of  the  interest  in  letters-patent,  or  power  of  at- 
torney, or  license  to  make  or  use  the  thing  patented,  when 
such  instrument  shall  not  exceed  three  hundred  words ;  the 
sum  of  two  dollars  when  it  shall  exceed  three  hundred  and  shall 
not  exceed  one  thousand  words  ;  and  the  sum  of  three  dollars 
when  it  shall  exceed  one  thousand  words  ;  which  fees  shall  in 
all  cases  be  paid  in  advance. 

SECTION  3.  And  be  it  further  enacted,  That  there  shall  be 


THE    PATENT   STATUTES.  561 

appointed  in  manner  aforesaid,  two  clerks,  to  be  employed  in 
copying  and  recording,  and  in  other  services  in  the  Patent 
Office,  who  shall  each  be  paid  a  salary  of  one  thousand  two 
hundred  dollars  per  annum. 

SECTION  4.  And  be  it  further  enacted,  That  the  Commis- 
sioner of  Patents  is  hereby  authorized  to  send  by  mail,  free  of 
postage,  the  annual  reports  of  the  Patent  Office,  in  the  same 
manner  in  which  he  is  empowered  to  send  letters  and  packages 
relating  to  the  business  of  the  Patent  Office. 

APPROVED  May  27,  1848. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT   ACT   OF  1849. 

9  STATUTES  AT  LARGE,  395. 

Section  2  of  tHe  Act  entitled  "An  Act  to  establish  the  Home 
Department,  and  to  provide  for  the  Treasury  Department 
an  Assistant  Secretary  of  the  Treasury  and  a  Commissioner 
of  the  Customs. ' ' 

SECTION  2.  And  ~be  it  further  enacted,  That  the  Secretary  of 
the  Interior  shall  exercise  and  perform  all  the  acts  of  supervi- 
sion and  appeal  in  regard  to  the  office  of  Commissioner  of  Pat- 
ents, now  exercised  by  the  Secretary  of  State  ;  and  the  said  Sec- 
retary of  the  Interior  shall  sign  all  requisitions  for  the  advance 
or  payment  of  money  out  of  the  Treasury  on  estimates  or  ac- 
counts, subject  to  the  same  adjustment  or  control  now  exercised 
on  similar  estimates  or  accounts  by  the  First  or  Fifth  Auditor 
and  First  Comptroller  of  the  Treasury. 

APPROVED  March. 3,  1849. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT   ACT   OF  1852: 

10  STATUTES  AT  LARGE,  75.. 

An  Act  in  addition  to  "  An  Act  to  Promote  the  Progress  of 
the  Useful  Arts," 


562  THE   PATENT    STATUTES. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  appeals  provided  for  in  the  eleventh  section  of  the 
act  entitled  An  Act  in  addition  to  an  act  to  promote  the  prog- 
ress of  the  useful  arts,  approved  March  the  third,  eighteen  hun- 
dred and  thirty-nine,  may  also  be  made  to  either  of  the  assistant 
judges  of  the  Circuit  Court  of  the  District  of  Columbia,  and 
all  the  powers,  duties,  and  responsibilities  imposed  by  the  afore- 
said act,  and  conferred  upon  the  chief  judge,  are  hereby  im- 
posed and  conferred  upon  each  of  the  said  assistant  judges. 

SECTION  2.  And  be  it  further  enacted,  That  in  case  appeals 
shall  be  made  to  the  said  chief  judge,  or  to  either  of  the  said 
assistant  judges,  the  Commissioner  of  Patents  shall  pay  to  such 
chief  judge  or  assistant  judge  the  sum  of  twenty-five  dollars, 
required  to  be  paid  by  the  appellant  into  the  Patent  Office  by 
the  eleventh  section  of  said  act,  on  said  appeal. 

SECTION  3.  And  be  it  further  enacted,  That  section  thirteen 
of  the  aforesaid  act,  approved  March  the  third,  eighteen  hun- 
dred and  thirty-nine,  is  hereby  repealed. 

APPROVED  August  30,  1852. 

Kepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT   ACT   OF   FEBRUARY   18,    1861. 

12  STATUTES  AT  LARGE,  130. 
An  Act  to  extend  the  right  of  appeal  from  the  decisions  of 

Circuit  Courts  to  the  Supreme  Court  of  the  United  States. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  from  all  judgments  and  decrees  of  any  Circuit 
Court  rendered  in  any  action,  suit,  controversy,  or  case,  at  law 
or  in  equity,  arising  under  any  law  of  the  United  States  grant- 
ing or  confirming  to  authors  the  exclusive  right  to  their  respec- 
tive writings,  or  to  inventors  the  exclusive  right  to  their  inven- 
tions or  discoveries,  a  writ  of  error  or  appeal,  as  the  case  may 
require,  shall  lie,  at  the  instance  of  either  party,  to  the  Su- 
preme Court  of  the  United  States,  in  the  same  manner  and 


THE    PATENT   STATUTES.  563 

nnder  the  same  circumstances  as  is  now  provided  by  law  in 
other  judgments  and  decrees  of  such  circuit  courts,  without 
regard  to  the  sum  or  value  in  controversy  in  the  action. 

APPROVED  February  18,  1861. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT   ACT  OF  MARCH   2,    1861. 

12  STATUTES  AT  LARGE,  246. 
An  Act  in  Addition  to  "  An  Act  to  promote  the  Progress  of 

the  useful  Arts." 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  the  Commissioner  of  Patents  may  establish  rules 
for  taking  affidavits  and  depositions  required  in  cases  pending 
in  the  Patent  Office,  and  such  affidavits  and  depositions  may  be 
taken  before  any  justice  of  the  peace,  or  other  officer  authorized 
by  law  to  take  depositions  to  be  used  in  the  courts  of  the 
United  States,  or  in  the  State  courts  of  any  State  where  such 
officer  shall  reside  ;  and  in  any  contested  case  pending  in  the 
Patent  Office  it  shall  be  lawful  for  the  clerk  of  any  court  of  the 
United  States  for  any  district  or  Territory,  and  he  is  hereby  re- 
quired, upon  the  application  of  any  party  to  such  contested 
case,  or  the  agent  or  attorney  of  such  party,  to  issue  subpoenas 
for  any  witnesses  residing  or  being  within  the  said  district  or 
Territory,  commanding  such  witnesses  to  appear  and  testify  be- 
fore any  justice  of  the  peace,  or  other  officer  as  aforesaid,  resid- 
ing within  the  said  district  or  Territory,  at  any  time  and  place 
in  the  subpoena  to  be  stated  ;  and  if  any  witness,  after  being 
duly  served  with  such  subpoana,  shall  refuse  or  neglect  to  ap- 
pear, or,  after  appearing,  shall  refuse  to  testify  (not  being 
privileged  from  giving  testimony),  such  refusal  or  neglect  being 
proved  to  the  satisfaction  of  any  judge  of  the  court  whose  clerk 
shall  have  issued  such  subpoena,  said  judge  may  thereupon  pro- 
ceed to  enforce  obedience  to  the  process,  or  to  punish  the  diso- 
bedience in  like  manner  as  any  court  of  the  United  States  may 
do  in  case  of  disobedience  to  process  of  subpoena  ad  testifican- 


564:  THE    PATENT    STATUTES. 

dum  issued  by  such  court ;  and  witnesses  in  such  cases  shall  be 
allowed  the  same  compensation  as  is  allowed  to  witnesses  at- 
tending the  courts  of  the  United  States  :  Provided,  That  no 
witness  shall  be  required  to  attend  at  any  place  more  than 
forty  miles  from  the  place  where  the  subpoena  shall  be  served 
upon  him  to  give  a  deposition  under  this  law  :  Provided  also, 
That  no  witness  shall  be  deemed  guilty  of  contempt  for  refus- 
ing to  disclose  any  secret  invention  made  or  owned  by  him  : 
And  provided  further,  That  no  witness  shall  be  deemed  guilty 
of  contempt  for  disobeying  any  subpcena  directed  to  him  by 
virtue  of  this  act,  unless  his  fees  for  going  to,  returning  from, 
and  one  day's  attendance  at  the  place  of  examination,  shall  be 
paid  or  tendered  to  him  at  the  time  of  the  service  of  the 
subpoena. 

SECTION  2.  And  be  it  further  enacted,  That  for  the  purposes 
of  securing  greater  uniformity  of  action  in  the  grant  and  refusal 
of  letters-patent,  there  shall  be  appointed  by  the  President,  by 
and  with  the  advice  and  consent  of  the  Senate,  three  examiners 
in  chief,  at  an  annual  salary  of  three  thousand  dollars  each,  to 
be  composed  of  persons  of  competent  legal  knowledge  and 
scientific  ability,  whose  duty  it  shall  be,  on  the  written  petition 
of  the  applicant  for  that  purpose  being  filed,  to  revise  and  de- 
termine upon  the  validity  of  decisions  made  by  examiners  when 
adverse  to  the  grant  of  letters-patent ;  and  also  to  revise  and 
determine  in  like  manner  upon  the  validity  of  the  decisions  of 
examiners  in  interference  cases,  and  when  required  by  the 
Commissioner  in  applications  for  the  extension  of  patents,  and 
to  perform  such  other  duties  as  may  be  assigned  to  them  by 
the  Commissioner ;  that  from  their  decisions  appeals  may  be 
taken  to  the  Commissioner  of  Patents  in  person,  upon  pay- 
ment of  the  fee  hereinafter  prescribed  ;  that  the  said  examiners 
in  chief  shall  be  governed  in  their  action  by  the  rules  to  be 
prescribed  by  the  Commissioner  of  Patents. 

SECTION  3.  And  be  it  further  enacted,  That  no  appeal  shall 
be  allowed  to  the  examiners  in  chief  from  the  decisions  of  the 
primary  examiners,  except  in  interference  cases,  until  after  the 
application  shall  have  been  twice  rejected  ;  and  the  second 
examination  of  the  application  by  the  primary  examiner  shall 


THE    PATENT   STATUTES.  565 

not  be  had  until  the  applicant,  in  view  of  the  references  given 
on  the  first  rejection,  shall  have  renewed  the  oath  of  invention, 
as  provided  for  in  the  seventh  section  of  the  act  entitled  "  An 
act  to  promote  the  progress  of  the  useful  arts,  and  to  repeal 
all  acts  and  parts  of  acts  heretofore  made  for  that  purpose," 
approved  July  fourth,  eighteen  hundred  and  thirty-six. 

SECTION  4.  And  be  it  further  enacted,  That  the  salary  of  the 
Commissioner  of  Patents,  from  and  after  the  passage  of  this 
act,  shall  be  four  thousand  five  hundred  dollars  per  annum,  and 
the  salary  of  the  chief  clerk  of  the  Patent  Office  shall  be  two 
thousand  five  hundred  dollars,  and  the  salary  of  the  librarian 
of  the  Patent  Office  shall  be  eighteen  hundred  dollars. 

SECTION  5.  And  he  it  further  enacted,  That  the  Commissioner 
of  Patents  is  authorized  to  restore  to  the  respective  applicants, 
or  when  not  removed  by  them,  to  otherwise  dispose  of  such  of 
the  models  belonging  to  rejected  applications  as  he  shall  not 
think  necessary  to  be  preserved.  The  same  authority  is  also 
given  in  relation  to  all  models  accompanying  applications  for 
designs.  He  is  further  authorized  to  dispense  in  future  with 
models  of  designs  when  the  design  can  be  sufficiently  repre- 
sented by  a  drawing. 

SECTION  6.  And  be  it  further  enacted,  That  the  tenth  section 
of  the  act  approved  the  third  of  March,  eighteen  hundred  and 
thirty-seven,  authorizing  the  appointment  of  agents  for  the 
transportation  of  models  and  specimens  to  the  Patent  Office, 
is  hereby  repealed. 

SECTION  7.  And  be  it  further  enacted,  That  the  Commis- 
sioner is  further  authorized,  from  time  to  time,  to  appoint,  in 
the  manner  already  provided  for  by  law,  such  an  additional  num- 
ber of  principal  examiners,  first  assistant  examiners,  and  sec- 
ond assistant  examiners  as  may  be  required  to  transact  the 
current  business  of  the  office  with  despatch,  provided  the 
whole  number  of  additional  examiners  shall  not  exceed  four 
of  each  class,  and  that  the  total  annual  expenses  of  the 
Patent  Office  shall  not  exceed  the  annual  receipts. 

SECTION  8.  And  be  it  further  enacted,  That  the  Commissioner 
may  require  all  papers  filed  in  the  Patent  Office,  if  not  cor- 
rectly, legibly,  and  clearly  written,  to  be  printed  at  the  cost  of 


566  THE    PATENT   STATUTES. 

the  parties  filing  such  papers  ;  and  for  gross  misconduct  he  may 
refuse  to  recognize  any  person  as  a  patent  agent,  either  gener- 
ally or  in  any  particular  case  ;  but  the  reasons  of  the  Commis- 
sioner for  such  refusal  shall  be  duly  recorded,  and  be  subject 
to  the  approval  of  the  President  of  the  United  States. 

SECTION  9.  And  be  it  further  enacted,  That  no  money  paid 
as  a  fee,  on  any  application  for  a  patent  after  the  passage  of 
this  act,  shall  be  withdrawn  or  refunded,  nor  shall  the  fee  paid 
on  filing  a  caveat  be  considered  as  part  of  the  sum  required  to 
be  paid  on  filing  a  subsequent  application  for  a  patent  for  the 
same  invention.  That  the  three  months'  notice  given  to  any 
caveator,  in  pursuance  of  the  requirements  of  the  twelfth  sec- 
tion of  the  act  of  July  fourth,  eighteen  hundred  and  thirty-six, 
shall  be  computed  from  the  day  on  which  such  notice  is  depos- 
ited in  the  post-office  at  Washington,  with  the  regular  time  for 
the  transmission  of  the  same  added  thereto,  which  time  shall  be 
indorsed  on  the  notice  ;  and  that  so  much  of  the  thirteenth 
section  of  the  act  of  Congress,  approved  July  fourth,  eighteen 
hundred  and  thirty-six,  as  authorizes  the  annexing  to  letters- 
patent  of  the  description  and  specification  of  additional  improve- 
ments is  hereby  repealed,  and  in  all  cases  where  additional  im- 
provements would  now  be  admissible,  independent  patents 
must  be  applied  for. 

SECTION  10.  And  be  it  further  enacted,  That  all  laws  now  in 
force  fixing  the  rates  of  the  Patent  Office  fees  to  be  paid,  and 
discriminating  between  the  inhabitants  of  the  United  States 
and  those  of  other  countries,  which  shall  not  discriminate 
against  the  inhabitants  of  the  United  States,  are  hereby  re- 
pealed, and  in  their  stead  the  following  rates  are  established  : — 

On  filing  each  caveat,  ten  dollars. 

On  filing  each  original  application  for  a  patent,  except  for  a 
design,  fifteen  dollars. 

On  issuing  each  original  patent,  twenty  dollars. 

On  every  appeal  from  the  examiner  in  chief  to  the  Commis- 
sioner, twenty  dollars. 

On  every  application  for  the  reissue  of  a  patent,  thirty 
dollars. 

On  every  application  for  the  extension  of  a  patent,  fifty 


THE   PATENT   STATUTES.  567 

dollars  ;  and  fifty  dollars  in  addition,  on  the  granting  of  every 
extension. 

On  filing  each  disclaimer,  ten  dollars. 

For  certified  copies  of  patents  and  other  papers,  ten  cents 
per  hundred  words. 

For  recording  every  assignment,  agreement,  power  of  at- 
torney, and  other  papers,  of  three  hundred  words  or  under, 
one  dollar. 

For  recording  every  assignment,  and  other  papers,  over 
three  hundred  and  under  one  thousand  words,  two  dollars. 

For  recording  every  assignment  or  other  writing,  if  over 
one  thousand  words,  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making  the 
same. 

SECTION  11.  And  be  it  further  enacted,  That  any  citizen  or 
citizens,  or  alien  or  aliens,  having  resided  one  year  in  the 
United  States,  and  taken  the  oath  of  his  or  their  intention  to 
become  a  citizen  or  citizens,  who,  by  his,  her,  or  their  own  in- 
dustry, genius,  efforts,  and  expense  may  have  invented  or 
produced  any  new  and  original  design,  or  a  manufacture, 
whether  of  metal  or  other  material  or  materials,  and  original 
design  for  a  bust,  statue,  or  bas-relief,  or  composition  in  alto  or 
basso  relievo,  or  any  new  and  original  impression  or  ornament, 
or  to  be  placed  on  any  article  of  manufacture,  the  same  being 
formed  in  marble  or  other  material,  or  any  new  and  useful 
pattern,  or  print,  or  picture,  to  be  either  worked  into  or 
worked  on,  or  printed,  or  painted,  or  cast,  or  otherwise  fixed 
on  any  article  of  manufacture,  or  any  new  and  original  shape 
or  configuration  of  any  article  of  manufacture,  not  known  or 
used  by  others  before  his,  her,  or  their  invention  or  production 
thereof,  and  prior  to  the  time  of  his,  her,  or  their  application 
for  a  patent  therefor,  and  who  shall  desire  to  obtain  an  exclu- 
sive property  or  right  therein  to  make,  use,  and  sell,  and  vend 
the  same,  or  copies  of  the  same,  to  others,  by  them  to  be  made, 
used,  and  sold,  may  make  application,  in  writing,  to  the  Com- 
missioner of  Patents,  expressing  such  desire  ;  and  the  Commis- 
sioner, on  due  proceedings  had,  may  grant  a  patent  therefor, 
as  in  the  case  now  of  application  for  a  patent,  for  the  term  of 


568  THE    PATENT   STATUTES. 

three  and  one  half  years,  or  for  the  term  of  seven  years,  or  for 
the  term  of  fourteen  years,  as  the  said  applicant  may  elect  in 
his  application  :  Provided,  That  the  fee  to  be  paid  in  such 
application  shall  be  for  the  term  of  three  years  and  six  months, 
ten  dollars,  for  seven  years,  fifteen  dollars,  and  for  fourteen 
years,  thirty  dollars  :  And  provided,  That  the  patentees  of 
designs  under  this  act  shall  be  entitled  to  the  extension  of  their 
respective  patents  for  the  term  of  seven  years,  from  the  day  on 
which  said  patent  shall  expire,  upon  the  same  terms  and 
restrictions  as  are  now  provided  for  the  extension  of  letters- 
patent. 

SECTION  12.  And  be  it  further  enacted,  That  all  applications 
for  patents  shall  be  completed  and  prepared  for  examination 
within  two  years  after  the  filing  of  the  petition,  and  in  default 
thereof  they  shall  be  regarded  as  abandoned  by  the  parties 
thereto  ;  unless  it  be  shown  to  the  satisfaction  of  the  Commis- 
sioner of  Patents  that  such  delay  was  unavoidable  ;  and  all 
applications  now  pending  shall  be  treated  as  if  filed  after 
the  passage  of  this  act,  and  all  applications  for  the  extension  of 
patents  shall  be  filed  at  least  ninety  days  before  the  expiration 
thereof  ;  and  notice  of  the  day  set  for  the  hearing  of  the  case 
shall  be  published,  as  now  required  by  law,  for  at  least  sixty 
days. 

SECTION  13.  And  be  it  further  enacted,  That  in  all  cases 
where  an  article  is  made  or  vended  by  any  person  under  the 
protection  of  letters-patent,  it  shall  be  the  duty  of  such  person 
to  give  sufficient  notice  to  the  public  that  said  article  is  so 
patented,  either  by  fixing  thereon  the  word  "  patented," 
together  with  the  day  and  year  the  patent  was  granted  ;  or 
when,  from  the  character  of  the  article  patented,  that  may  be 
impracticable,  by  enveloping  one  or  more  of  the  said  articles, 
and  affixing  a  label  to  the  package,  or  otherwise  attaching 
thereto  a  label  on  which  the  notice,  with  the  date,  is  printed  ; 
on  failure  of  which,  in  any  suit  for  the  infringement  of  letters- 
patent  by  the  party  failing  so  to  mark  the  article  the  right  to 
which  is  infringed  upon,  no  da-mage  shall  be  recovered  by  the 
plaintiff,  except  on  proof  that  the  defendant  was  duly  notified 
of  the  infringement,  and  continued  after  such  notice  to  make 


THE   PATENT   STATUTES.  569 

or  vend  the  article  patented.  And  the  sixth  section  of  the  act 
entitled  "  An  act  in  addition  to  an  act  to  promote  the  prog- 
ress of  the  useful  arts, ' '  and  so  forth,  approved  the  twenty- 
ninth  day  of  August,  eighteen  hundred  and  forty-two,  be,  and 
the  same  is  hereby,  repealed. 

SECTION  14.  And  be  it  further  enacted,  That  the  Commis- 
sioner of  Patents  be,  and  he  is  hereby,  authorized  to  print,  or 
in  his  discretion  to  cause  to  be  printed,  ten  copies  of  the 
description  and  claims  of  all  patents  which  may  hereafter  be 
granted,  and  ten  copies  of  the  drawings  of  the  same,  when 
drawings  shall  accompany  the  patents  :  Provided,  The  cost  of 
printing  the  text  of  said  descriptions  and  claims  shall  not 
exceed,  exclusive  of  stationery,  the  sum  of  two  cents  per  hun- 
dred words  for  each  of  said  copies,  and  the  cost  of  the  drawing 
shall  not  exceed  fifty  cents  per  copy  ;  one  copy  of  the  above 
number  shall  be  printed  on  parchment  to  be  affixed  to  the 
letters-patent ;  the  work  shall  be  under  the  direction,  and  sub- 
ject to  the  approval,  of  the  Commissioner  of  Patents,  and  the 
expense  of  the  said  copies  shall  be  paid  for  out  of  the  patent  fund. 

SECTION  15.  And  be  it  further  enacted,  That  printed  copies 
of  the  letters-patent  of  the  United  States,  with  the  seal  of  the 
Patent  Office  affixed  thereto  and  certified  and  signed  by  the 
Commissioner  of  Patents,  shall  be  legal  evidence  of  the  con- 
tents of  said  letters-patent  in  all  cases. 

SECTION  16.  And  be  it  further  enacted,  That  all  patents 
hereafter  granted  shall  remain  in  force  for  the  term  of  seven- 
teen years  from  the  date  of  issue ;  and  all  extension  of  such 
patents  is  hereby  prohibited. 

SECTION  17.  And  be  it  further  enacted.  That  all  acts  and 
parts  of  acts  heretofore  passed,  which  are  inconsistent  with  the 
provisions  of  this  act,  be,  and  the  same  are  hereby,  repealed. 

APPROVED  March  2,  1861. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 


570  THE    PATENT    STATUTES. 

PATENT   ACT   OF  1862. 

12  STATUTES  AT  LAKGE,  583. 

Section  4  of  an  Act  making  supplemental  appropriations  for 

sundry  civil  expenses,  &c. 

SECTION  4.  For  the  fund  of  the  Patent  Office,  fifty  thousand 
eight  hundred  and  fifty-five  dollars  and  forty-nine  cents,  to 
supply  a  deficiency  existing  under  the  act  of  March  second, 
eighteen  hundred  and  sixty-one,  entitled  "  An  act  in  addition 
to  an  act  to  promote  the  progress  of  the  useful  arts"  :  Pro- 
vided, That  the  fourteenth  section  of  said  act  be,  and  the  same 
is  hereby,  repealed. 

APPROVED  July  16,  1862. 


PATENT  ACT   OF  1863. 
12  STATUTES  AT  LAKGE,  796. 

An  Act  to  amend  an  Act  entitled  "  An  Act  to  promote  the 
Progress  of  the  useful  Arts." 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress 
assembled.  That  so  much  of  section  seven  of  the  act  entitled 
"An  act  to  promote  the  progress  of  the  useful  arts,"  approved 
July  fourth,  eighteen  hundred  and  thirty-six,  as  requires  a 
renewal  of  the  oath,  be,  and  the  same  is  hereby,  repealed. 

SECTION  2.  And  be  it  further  enacted,  That,  whereas  the 
falling  off  of  the  revenue  of  the  Patent  Office  required  a  reduc- 
tion of  the  compensation  of  the  examiners  and  clerks,  or  other 
employees  in  the  office,  after  the  thirty-first  day  of  August, 
eighteen  hundred  and  sixty-one,  that  the  Commissioner  of 
Patents  be,  and  he  is  hereby,  authorized,  whenever  the  revenue 
of  the  office  will  justify  him  in  so  doing,  to  pay  them  such 
sums,  in  addition  to  what  they  shall  already  have  received,  as 
will  make  their  compensation  the  same  as  it  was  at  that  time. 

SECTION  3.  And  be  it  further  enacted,  That  every  patent 
shall  be  dated  as  of  a  day  not  later  than  six  months  after  the 
time  at  which  it  was  passed  and  allowed,  and  notice  thereof 
sent  to  the  applicant  or  his  agent.  And  if  the  final  fee  for 


THE    PATENT   STATUTES.  571 

such  patent  be  not  paid  within  the  said  six  months,  the  patent 
shall  be  withheld,  and  the  invention  therein  described  shall 
become  public  property  as  against  the  applicant  therefor  :  Pro- 
vided, That  in  all  cases  where  patents  have  been  allowed  previ- 
ous to  the  passage  of  this  act,  the  said  six  months  shall  be  reck- 
oned from  the  date  of  such  passage. 

APPROVED  March  3,  1863. 

Kepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT  ACT   OF  1864. 
13  STATUTES  AT  LARGE,  194. 

An  Act  amendatory  of  an  Act  to  amend  an  Act  entitled  "  An 
Act  to  promote  the  Progress  of  the  Useful  Arts,"  ap- 
proved March  three,  eighteen  hundred  and  sixty- three. 

Be  it  enacted  by  the  /Senate  and  House  of -Representatives  of 
the  United  States  of  America  in  Congress  assembled,  That  any 
person  having  an  interest  in  an  invention,  whether  as  the  in- 
ventor or  assignee,  for  which  a  patent  was  ordered  to  issue 
upon  the  payment  of  the  final  fee,  as  provided  in  section 
three  of  an  act  approved  March  three,  eighteen  hundred  and 
sixty-three,  but  who  has  failed  to  make  payment  of  the  final 
fee,  as  provided  by  said  act,  shall  have  the  right  to  make 
the  payment  of  such  fee,  and  receive  the  patent  withheld  on 
account  of  the  non-payment  of  said  fee,  provided  such  pay- 
ment be  made  within  six  months  from  the  date  of  the  passage 
of  this  act :  Provided,  That  nothing  herein  shall  be  so  con- 
strued as  to  hold  responsible  in  damages  any  persons  who 
have  manufactured  or  used  any  article  or  thing  for  which  a 
patent,  as  aforesaid,  was  ordered  to  be  issued. 

APPROVED  June  25,  1864. 

Kepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 


572  THE    PATENT   STATUTES. 

PATENT  ACT   OF  1865. 

13  STATUTES  AT  LARGE,  533. 

An  Act  amendatory  of  ' '  An  Act  to  amend  an  Act  entitled 
'An  Act  to  promote  the  Progress  of  the  useful  Arts,'  ap- 
proved March  three,  eighteen  hundred  and  sixty -three." 

Be  it  enacted  J>y  the  Senate  and  House  of  Representatives  of 
the  United  States  of  America  in  Congress  assembled,  That  any 
persons  having  an  interest  in  an  invention,  whether  as  inventor 
or  assignee,  for  which  a  patent  was  ordered  to  issue  upon  the 
payment  of  the  final  fee,  as  provided  in  section  three  of  an 
act  approved  March  three,  eighteen  hundred  and  sixty-three, 
but  who  has  failed  to  make  payment  of  the  final  fee  as  pro- 
vided in  said  act,  shall  have  the  right  to  make  an  application 
for  a  patent  for  his  invention,  the  same  as  in  the  case  of  an 
original  application,  provided  such  application  be  made  within 
two  years  after  the  date  of  the  allowance  of  the  original  appli- 
cation :  Provided,  That  nothing  herein  shall  be  so  construed 
as  to  hold  responsible  in  damages  any  persons  who  have  manu- 
factured or  used  any  article  or  thing  for  which  a  patent  afore- 
said was  ordered  to  issue.  This  act  shall  apply  to  all  cases  now 
in  the  Patent  Office,  and  also  to  such  as  shall  hereafter  be  filed. 
And  all  acts  or  parts  of  acts  inconsistent  with  this  act  are  here- 
by repealed. 

APPROVED  March  3,  1 865. 

Kepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT   STATUTE   OF  1866. 

14  STATUTES  AT  LARGE,  76. 

An  Act  in  Amendment  of  an  Act  to  promote  the  Progress 
of  the  Useful  Arts,  and  the  Acts  in  Amendment  of  an 
Addition  thereto. 

JBe  it  enacted  l)y  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
upon  appealing  for  the  first  time  from  the  decision  of  the 
primary  examiner  to  the  examiners-in-chief  in  the  Patent 


THE    PATENT   STATUTES.  573 

Office,  the  appellant  shall  pay  a  fee  of  ten  dollars  into  the 
Patent  Office,  to  the  credit  of  the  patent  fund  :  and  no  appeal 
from  the  primary  examiner  to  the  examiners-in-chief  shall 
hereafter  be  allowed  until  the  appellant  shall  pay  said  fee. 

APPROVED  June  27,  1866. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

CONSOLIDATED  PATENT  ACT   OF  1870. 

16  STATUTES  AT  LARGE,  198. 

An  Act  to  revise,  consolidate,  and  amend  the  Statutes,  relating 
to  Patents  and  Copyrights. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  assem- 
bled. That  there  shall  be  attached  to  the  Department  of  the 
Interior  the  office,  heretofore  established,  known  as  the  Patent 
Office,  wherein  all  records,  books,  models,  drawings,  specifi- 
cations, and  other  papers  and  things  pertaining  to  patents  shall 
be  safely  kept  and  preserved.  [See  Revised  Statutes,  Section 
475.] 

SECTION  2.  And  be  it  further  enacted,  That  the  officers  and 
employees  of  said  office  shall  continue  to  be  :  one  commissioner 
of  patents,  one  assistant  commissioner,  and  three  examiners-in- 
chief,  to  be  appointed  by  the  President,  by  and  with  the  advice 
and  consent  of  the  Senate  ;  one  chief  clerk,  one  examiner  in 
charge  of  interferences,  twenty-two  principal  examiners, 
twenty-two  first  assistant  examiners,  twenty-two  second  assist- 
ant examiners,  one  librarian,  one  machinist,  five  clerks  of  class 
four,  six  clerks  of  class  three,  fifty  clerks  of  class  two,  forty- 
five  clerks  of  class  one,  and  one  messenger  and  purchasing 
clerk,  all  of  whom  shall  be  appointed  by  the  Secretary  of  the 
Interior,  upon  nomination  of  the  Commissioner  of  Patents. 
[See  Revised  Statutes,  Section  476.] 

SECTION  3.  And  be  it  further  enacted,  That  the  Secretary 
of  the  Interior  may  also  appoint,  upon  like  nomination,  such 
additional  clerks  of  classes  two  and  one,  and  of  lower  grades, 
copyists  of  drawings,  female  copyists,  skilled  laborers,  labor- 


574  THE   PATENT   STATUTES. 

ers  and  watchmen,  as  may  be  from  time  to  time  appropriated 
for  by  Congress.  [See  Revised  Statutes,  Section  169.] 

SECTION  4.  And  be  it  further  enacted,  That  the  annual  sal- 
aries of  the  officers  and  employees  of  the  Patent  Office  shall 
be  as  follows  : — 

Of  the  commissioner  of  patents,  four  thousand  five  hundred 
dollars. 

Of  the  assistant  commissioner,  three  thousand  dollars. 

Of  the  examiners-in-chief,  three  thousand  dollars  each. 

Of  the  chief  clerk,  two  thousand  five  hundred  dollars. 

Of  the  examiner  in  charge  of  interferences,  two  thousand 
five  hundred  dollars. 

Of  the  principal  examiners,  two  thousand  five  hundred 
dollars  each. 

Of  the  first  assistant  examiners,  one  thousand  eight  hun- 
dred dollars  each. 

Of  the  second  assistant  examiners,  one  thousand  six  hundred 
dollars  each. 

Of  the  librarian,  one  thousand  eight  hundred  dollars. 

Of  the  machinist,  one  thousand  six  hundred  dollars. 

Of  the  clerks  of  class  four,  one  thousand  eight  hundred 
dollars  each. 

Of  the  clerks  of  class  three,  one  thousand  six  hundred  dol- 
lars each. 

Of  the  clerks  of  class  two,  one  thousand  four  hundred  dol- 
lars each. 

Of  the  clerks  of  class  one,  one  thousand  two  hundred  dollars 
each. 

Of  the  messenger  and  purchasing  clerk,  one  thousand  dollars. 

Of  laborers  and  watchmen,  seven  hundred  and  twenty  dol- 
lars each. 

Of  the  additional  clerks,  copyists  of  drawings,  female  copy- 
ists, and  skilled  laborers,  such  rates  as  may  be  fixed  by  the 
acts  making  appropriations  for  them.  [See  Revised  Statutes, 
Sections  477,  440,  and  167.] 

SECTION  5.  And  be  it  further  enacted.  That  all  officers  and 
employees  of  the  Patent  Office  shall,  before  entering  upon 
their  duties,  make  oath  or  affirmation  truly  and  faithfully  to 


THE    PATENT    STATUTES.  575 

execute  the  trusts  committed  to  them.     [See  Revised  Statutes, 
Sections  1756  and  1757.] 

SECTION  6.  And  be  it  further  enacted.  That  the  commis- 
sioner and  chief  clerk,  before  entering  upon  their  duties,  shall 
severally  give  bond,  with  sureties,  to  the  Treasurer  of  the 
United  States,  the  former  in  the  sum  of  ten  thousand  dollars, 
and  the  latter  in  the  sum  of  five  thousand  dollars,  conditioned 
for  the  faithful  discharge  of  their  duties,  and  that  they  will 
render  to  the  proper  officers  of  the  treasury  a  true  account  of 
all  money  received  by  virtue  of  their  office.  [See  Revised 
Statutes,  Section  479.] 

SECTION  7.  And  be  it  further  enacted,  That  it  shall  be  the 
duty  of  the  commissioner,  under  the  direction  of  the  Secretary 
of  the  Interior,  to  superintend  or  perform  all  the  duties  respect- 
ing the  granting  and  issuing  of  patents  which  herein  are,  or  may 
hereafter  be,  by  law  directed  to  be  done  ;  and  he  shall  have, 
charge  of  all  books,  records,  papers,  models,  machines,  and 
other  things  belonging  to  said  office.  [See  Revised  Statutes, 
Section  481.] 

SECTION  8.  And  be  it  further  enacted,  That  the  commis- 
sioner may  send  and  receive  by  mail,  free  of  postage,  letters, 
printed  matter,  and  packages  relating  to  the  business  of  his 
office,  including  Patent  Office  reports.  [See  19  Statutes  at 
Large,  Chap.  103,  Section  5,  p.  335  ;  and  20  Statutes  at 
Large,  Chap.  180,  Section  29,  p.  362.] 

SECTION  9.  And  be  it  further  enacted,  That  the  commis- 
sioner shall  lay  before  Congress,  in  the  month  of  January,  an- 
nually, a  report,  giving  a  detailed  statement  of  all  moneys  re- 
ceived for  patents,  for  copies  of  records  or  drawings,  or  from 
any  other  source  whatever  ;  a  detailed  statement  of  all  expen- 
ditures for  contingent  and  miscellaneous  expenses  ;  a  list  of  all 
patents  which  were  granted  during  the  preceding  year,  desig- 
nating under  proper  heads  the  subjects  of  such  patents  ;  an 
alphabetical  list  of  the  patentees,  with  their  places  of  resi- 
dence ;  a  list  of  all  patents  which  have  been  extended  during 
the  year  ;  and  such  other  information  of  the  condition  of  the 
Patent  Office  as  may  be  useful  to  Congress  or  the  public. 
[See  Revised  Statutes,  Section  494.] 


576  THE    PATENT    STATUTES. 

SECTION  10.  And  be  it  further  enacted ',  That  the  examiners- 
in-chief  shall  be  persons  of  competent  legal  knowledge  and 
scientific  ability,  whose  duty  it  shall  be,  on  the  written  peti- 
tion of  the  appellant,  to  revise  and  determine  upon  the  valid- 
ity of  the  adverse  decisions  of  examiners  upon  applications  for 
patents,  and  for  reissues  of  patents,  and  in  interference  cases  ; 
and  when  required  by  the  commissioner,  they  shall  hear  and 
report  upon  claims  for  extensions,  and  perform  such  other  like 
duties  as  he  may  assign  them.  [See  Revised  Statutes,  Sec- 
tion 482.] 

SECTION  11.  And  be  it  further  enacted,  That  in  case  of  the 
death,  resignation,  absence,  or  sickness  of  the  commissioner, 
his  duties  shall  devolve  upon  the  assistant  commissioner  until 
a  successor  shall  be  appointed,  or  such  absence  or  sickness  shall 
cease.  [See  Eevised  Statutes,  Sections  ITT,  ITS,  and  1T9.] 

SECTION  12.  And  be  it  further  enacted,  That  the  commis- 
sioner shall  cause  a  seal  to  be  provided  for  said  office,  with 
such  device  as  the  President  may  approve,  with  which  all  rec- 
ords or  papers  issued  from  said  office,  to  be  used  in  evidence, 
shall  be  authenticated.  [See  Revised  Statutes,  Section  4T8.] 

SECTION  13.  And  be  it  further  enacted,  That  the  commis- 
sioner shall  cause  to  be  classified  and  arranged  in  suitable 
cases,  in  the  rooms  and  galleries  provided  for  that  purpose, 
the  models,  specimens  of  composition,  fabrics,  manufactures, 
works  of  art,  and  designs,  which  have  been  or  shall  be  deposit- 
ed in  said  office  ;  and  said  rooms  and  galleries  shall  be  kept 
open  during  suitable  hours  for  public  inspection.  [See  Re- 
vised Statutes,  Section  484.] 

SECTION  14.  And  be  it  further  enacted,  That  the  commis- 
sioner may  restore '  to  the  respective  applicants  such  of  the 
models  belonging  to  rejected  applications  as  he  shall  not  think 
necessary  to  be  preserved,  or  he  may  sell  or  otherwise  dispose 
of  them  after  the  application  has  been  finally  rejected  for  one 
year,  paying  the  proceeds  into  the  treasury,  as  other  patent 
moneys  are  directed  to  be  paid.  [See  Revised  Statutes,  Sec- 
tion 485.] 

SECTION  15.  And  be  it  further  enacted,  That  there  shall  be 
purchased,  for  the  use  of  said  office,  a  library  of  such  scien- 


THE    PATENT   STATUTES.  577 

tific  works  and  periodicals,  both  foreign  and  American,  as  may 
aid  the  officers  in  the  discharge  of  their  duties,  not  exceeding 
the  amount  annually  appropriated  by  Congress  for  that  pur- 
pose. [See  Revised  Statutes,  Section  486.] 

SECTION  ]  6.  And  be  it  further  enacted.  That  all  officers 
and  employees  of  the  Patent  Office  shall  be  incapable,  during 
the  period  for  which  they  shall  hold  their  appointments,  to 
acquire  or  take,  directly  or  indirectly,  except  by  inheritance 
or  bequest,  any  right  or  interest  in  any  patent  issued  by  said 
office.  [See  Revised  Statutes,  Section  480.] 

SECTION  17.  And  be  it  further  enacted,  That  for  gross  mis- 
conduct the  commissioner  may  refuse  to  recognize  any  person 
as  a  patent  agent,  either  generally  or  in  any  particular  case  ; 
but  the  reasons  for  such  refusal  shall  be  duly  recorded,  and  be 
subject  to  the  approval  of  the  Secretary  of  the  Interior.  [See 
Revised  Statutes,  Section  487.] 

SECTION  18.  And  be  it  further  enacted,  That  the  commis- 
sioner may  require  all  papers  filed  in  the  Patent  Office,  if  not 
correctly,  legibly  and  clearly  written,  to  be  printed  at  the  cost 
of  the  party  filing  them.  [See  Revised  Statutes,  Section 
488.] 

SECTION  19.  And  be  it  further  enacted,  That  the  commis- 
sioner, subject  to  the  approval  of  the  Secretary  of  the  Interi- 
or, may  from  time  to  time  establish  rules  and  regulations,  not 
inconsistent  with  law,  for  the  conduct  of  proceedings  in  the 
Patent  Office.  [See  Revised  Statutes,  Section  483.] 

SECTION  20.  And  be  it  further  enacted,  That  the  commis- 
sioner may  print  or  cause  to  be  printed  copies  of  the  specifica- 
tions of  all  letters-patent  and  of  the  drawings  of  the  same,  and 
copies  of  the  claims  of  current  issues,  and  copies  of  such  laws, 
decisions,  rules,  regulations,  and  circulars  as  may  be  necessary 
for  the  information  of  the  public.  [See  Revised  Statutes, 
Sections  489,  490,  and  491.] 

SECTION  21.  And  be  it  further  enacted,  That  all  patents 
shall  be  issued  in  the  name  of  the  United  States  of  America, 
under  the  seal  of  the  Patent  Office,  and  shall  be  signed  by  the 
Secretary  of  the  Interior  and  countersigned  by  the  commis- 
sioner, and  they  shall  be  recorded,  together  with- the  specifiJea- 


578  THE    PATENT    STATUTES. 

tion,  in  said  office,  in  books  to  be  kept  for  that  purpose.  [See 
Revised  Statutes,  Section  4883.] 

SECTION  22.  And  le  it  further  enacted,  That  every  patent 
shall  contain  a  short  title  or  description  of  the  invention  or  dis- 
covery, correctly  indicating  its  nature  and  design,  and  a  grant 
to  the  patentee,  his  heirs  or  assigns,  for  the  term  of  seventeen 
years,  of  the  exclusive  right  to  make,  use,  and  vend  the  said 
invention  or  discovery  throughout  the  United  States  and  the 
Territories  thereof,  referring  to  the  specification  for  the  par- 
ticulars thereof  ;  and  a  copy  of  said  specifications  and  of  the 
drawings  shall  be  annexed  to  the  patent  and  be  a  part  there- 
of. [See  Revised  Statutes,  Section  4884.] 

SECTION  23.  And  l>e  it  further  enacted,  That  every  patent 
shall  date  as  of  a  day  not  later  than  six  months  from  the  time 
at  which  it  was  passed  and  allowed,  and  notice  thereof  was 
sent  to  the  applicant  or  his  agent  ;  and  if  the  final  fee  shall 
not  be  paid  within  that  period,  the  patent  shall  be  withheld. 
[See  Revised  Statutes,  Section  4885.] 

SECTION  24.  And  l>e  it  further  enacted,  That  any  person 
who  has  invented  or  discovered  any  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter,  or  any  new 
and  useful  improvement  thereof,  not  known  or  used  by  others 
.in  this  country,  and  not  patented,  or  described  in  any  printed 
publication  in  this  or  any  foreign  country,  before  his  inven- 
tion or  discovery  thereof,  and  not  in  public  use  or  on  sale  for 
more  than  two  years  prior  to  his  application,  unless  the  same 
is  proved  to  have  been  abandoned,  may,  upon  payment  of  the 
duty  required  by  law,  and  other  due  proceedings  had,  obtain 
a  patent  therefor.  [See  Revised  Statutes,  Section  488(5.] 

SECTION  25.  And  be  it  further  enacted,  That  no  person  shall 
be  debarred  from  receiving  a  patent  for  his  invention  or  dis- 
covery, nor. shall  any  patent  be  declared  invalid,  by  reason  of 
its  having  been  first  patented  or  caused  to  be  patented  in  a 
foreign  country  :  Provided,  The  same  shall  not  have  been 
introduced  into  public  use  in  the  United  States  for  more  than 
two  years  prior  to  the  application,  and  that  the  patent  shall 
expire  at  the  same  time  with  the  foreign  patent,  or,  if  there 
be  more  than  one,  at  the  same  time  with  the  one  having  the 


THE   PATENT   STATUTES.  579 

shortest  term  ;  but  in  no  case  shall  it  be  in  force  more  than 
seventeen  years.  [See  Revised  Statutes,  Section  4887.] 

SECTION  26.  And  be  it  further  enacted,  That  before  any 
inventor  or  discoverer  shall  receive  a  patent  for  his  invention 
or  discovery,  he  shall  make  application  therefor,  in  writing, 
to  the  commissioner,  and  shall  file  in  the  Patent  Office  a  writ- 
ten description  of  the  same,  and  of  the  manner  and  process  of 
making,  constructing,  compounding,  and  using  it,  in  such  full, 
clear,  concise,  and  exact  terms  as  to  enable  any  person  skilled 
in  the  art  or  science  to  which  it  appertains,  or  with  which  it  is 
most  nearly  connected,  to  make,  construct,  compound,  and 
use  the  same  ;  and  in  case  of  a  machine,  he  shall  explain  the 
principle  thereof,  and  the  best  mode  in  which  he  has  contem- 
plated applying  that  principle  so  as  to  distinguish  it  from  other 
inventions  ;  and  he  shall  particularly  point  out  and  distinctly 
claim  the  part,  improvement,  or  combination  which  he  claims 
as  his  invention  or  discovery  ;  and  said  specification  and  claim 
shall  be  signed  by  the  inventor  and  attested  by  two  witnesses. 
[See  Revised  Statutes,  Section  4888.] 

SECTION  27.  And  be  it  further  enacted,  That  when  the  na- 
ture of  the  case  admits  of  drawings,  the  applicant  shall  furnish 
one  copy  signed  by  the  inventor  or  his  attorney  in  fact,  and 
attested  by  two  witnesses,  which  shall  be  filed  in  the  Patent 
Office  ;  and  a  copy  of  said  drawings,  to  be  furnished  by  the 
Patent  Office,  shall  be  attached  to  the  patent  as  part  of  the 
specification.  [See  Revised  Statutes,  Section  4889.] 

SECTION  28.  And  be  it  further  enacted,  That  when  the  in- 
vention or  discovery  is  of  a  composition  of  matter,  the  appli- 
cant, if  required  by  the  commissioner,  shall  furnish  specimens 
of  ingredients  and  of  the  composition,  sufficient  in  quantity 
for  the  purpose  of  experiment.  [See  Revised  Statutes,  Sec- 
tion 4890.] 

SECTION  29.  And  be  it  further  enacted,  That  in  all  cases 
which  admit  of  representation  by  model,  the  applicant,  if  re- 
quired by  the  commissioner,  shall  furnish  one  of  convenient 
size  to  exhibit  advantageously  the  several  parts  of  his  inven- 
tion or  discovery.  [See  Revised  Statutes,  Section  4891.] 

SECTION  30.   And  be  it  further  enacted,  That  the  applicant 


580  THE    PATENT   STATUTES. 

shall  make  oath  or  affirmation  that  he  does  verily  believe  him- 
self to  be  the  original  and  first  inventor  or  discoverer  of  the  art, 
machine,  manufacture,  composition,  or  improvement  for  which 
he  solicits  a  patent  ;  that  he  does  not  know  and  does  not 
believe  that  the  same  was  ever  before  known  or  used  ;  and 
shall  state  of  what  country  he  is  a  citizen.  And  said  oath  or 
affirmation  may  be  made  before  any  person  within  the  United 
States  authorized  by  law  to  administer  oaths,  or,  when  the  ap- 
plicant resides  in  a  foreign  country,  before  any  minister, 
charge  d'affaires,  consul,  or  commercial  agent,  holding  com- 
mission under  the  government  of  the  United  States,  or  before 
any  notary  public  of  the  foreign  country  in  which  the  appli- 
cant may  be.  [See  Revised  Statutes,  Section  4892.] 

SECTION  31.  And  be  it  further  enacted,  That  on  the  filing 
of  any  such  application  and  the  payment  of  the  duty  required 
by  law,  the  commissioner  shall  cause  an  examination  to  be 
made  of  the  alleged  new  invention  or  discovery  ;  and  if  on 
such  examination  it  shall  appear  that  the  claimant  is  justly  en- 
titled to  a  patent  under  the  law,  and  that  the  same  is  suffi- 
ciently useful  and  important,  the  commissioner  shall  issue  a 
patent  therefor.  [See  Revised  Statutes,  Section  4893.] 

SECTION  32.  And  be  it  further  enacted,  That  all  applica- 
tions for  patents  shall  be  completed  and  prepared  for  examina- 
tion within  two  years  after  the  filing  of  the  petition,  and  in 
default  thereof,  or  upon  failure  of  the  applicant  to  prosecute 
the  same  within  two  years  after  any  action  therein,  of  which 
notice  shall  have  been  given  to  the  applicant,  they  shall  be  re- 
garded as  abandoned  by  the  parties  thereto,  unless  it  be  shown 
to  the  satisfaction  of  the  commissioner  that  such  delay  was  un- 
avoidable. [See  Revised  Statutes,  Section  4894.] 

SECTION  33.  And  be  it  further  enacted,  That  patents  may 
be  granted  and  issued  or  reissued  to  the  assignee  of  the  invent- 
or or  discoverer,  the  assignment  thereof  being  first  entered 
of  record  in  the  Patent  Office  ;  but  in  such  case  the  applica- 
tion for  the  patent  shall  be  made  and  the  specifications  sworn 
to  by  the  inventor  or  discoverer  ;  and  also,  if  he  be  living,  in 
case  of  an  application  for  reissue.  [See  Revised  Statutes, 
Section  4895.] 


THE   PATENT   STATUTES.  581 

SECTION  34.  And  be  it  further  enacted,  That  when  any 
person,  having  made  any  new  invention  or  discovery  for  which 
a  patent  might  have  been  granted,  dies  before  a  patent  is 
granted,  the  right  of  applying  for  and  obtaining  the  patent 
shall  devolve  on  his  executor  or  administrator,  in  trust  for  the 
heirs  at  law  of  the  deceased,  in  case  he  shall  have  died  intes- 
tate ;  or  if  he  shall  have  left  a  will,  disposing  of  the  same, 
then  in  trust  for  his  devisees,  in  as  full  manner  and  on  the 
same  terms  and  conditions  as  the  same  might  have  been 
claimed  or  enjoyed  by  him  in  his  lifetime  ;  and  when  the  ap- 
plication shall  be  made  by  such  legal  representatives,  the  oath 
or  affirmation  required  to  be  made  shall  be  so  varied  in  form 
that  it  can  be  made  by  them.  [See  Revised  Statutes,  Sec- 
tion 4896.] 

SECTION  35.  And  be  it  further  enacted,  That  any  person 
who  has  an  interest  in  an  invention  or  discovery,  whether  as 
inventor,  discoverer,  or  assignee,  for  which  a  patent  was 
ordered  to  issue  upon  the  payment  of  the  final  fee,  but  who 
has  failed  to  make  payment  thereof  within  six  months  from 
the  time  at  which  it  was  passed  and  allowed,  and  notice  there- 
of was  sent  to  the  applicant  or  his  agent,  shall  have  a  right  to 
make  an  application  for  a  patent  for  such  invention  or  discov- 
ery the  same  as  in  the  case  of  an  original  application  :  Pro- 
vided, That  the  second  application  be  made  within  two  years 
after  the  allowance  of  the  original  application.  But  no  person 
shall  be  held  responsible  in  damages  for  the  manufacture  or 
use  of  any  article  or  thing  for  which  a  patent,  as  aforesaid, 
was  ordered  to  issue,  prior  to  the  issue  thereof  :  And  pro- 
vided further,  That  when  an  application  for  a  patent  has  been 
rejected  or  withdrawn,  prior  to  the  passage  of  this  act,  the  ap- 
plicant shall  have  six  months  from  the  date  of  such  passage  to 
renew  his  application,  or  to  file  a  new  one  ;  and  if  he  omit  to 
do  either,  his  application  shall  be  held  to  have  been  aban- 
doned. Upon  the  hearing  of  such  renewed  applications  aban- 
donment shall  be  considered  as  a  question  of  fact.  [See  Re- 
vised Statutes,  Section  4897.] 

SECTION  36.  And  be  it  further  enacted,  That  every  patent 
or  any  interest  therein  shall  be  assignable  in  law,  by  an  instru- 


582  THE    PATENT   STATUTES. 

ment  in  writing  ;  and  the  patentee  or  his  assigns  or  legal 
representatives  may,  in  like  manner,  grant  and  convey  an  ex- 
clusive right  under  his  patent  to  the  whole  or  any  specified 
part  of  the  United  States  ;  and  said  assignment,  grant,  or  con- 
veyance shall  be  void  as  against  any  subsequent  purchaser  or 
mortgagee  for  a  valuable  consideration,  without  notice,  unless 
it  is  recorded  in  the  Patent  Office  within  three  months  from 
the  date  thereof.  [See  Kevised  Statutes,  Section  4898.] 

SECTION  37.  And  be  it  further  enacted,  That  every  person 
who  may  have  purchased  of  the  inventor,  or  with  his  knowl- 
edge and  consent  may  have  constructed  any  newly  invented  or 
discovered  machine,  or  other  patentable  article,  prior  to  the 
application  by  the  inventor  or  discoverer  for  a  patent,  or  sold 
or  used  one  so  constructed,  shall  have  the  right  to  use,  and 
vend  to  others  to  be  used,  the  specific  thing  so  made  or  pur- 
chased, without  liability  therefor.  [See  Revised  Statutes,  Sec- 
tion 4899.] 

SECTION  38.  And  be  it  further  enacted,  That  it  shall  be  the 
duty  of  all  patentees,  and  their  assigns  and  legal  representa- 
tives, and  of  all  persons  making  or  vending  any  patented  arti. 
cle  for  or  under  them,  to  give  sufficient  notice  to  the  public 
that  the  same  is  patented,  either  by  fixing  thereon  the  word 
"patented,"  together  with  the  day  and  year  the  patent  was 
granted  ;  or  when,  from  the  character  of  the  article,  this  can- 
not be  done,  by  fixing  to  it  or  to  the  package  wherein  one  or 
more  of  them  is  enclosed,  a  label  containing  the  like  notice  ; 
and  in  any  suit  for  infringement,  by  the  party  failing  so  to 
mark,  no  damages  shall  be  recovered  by  the  plaintiff,  except 
on  proof  that  the  defendant  was  duly  notified  of  the  infi-inge- 
inent,  and  continued,  after  such  notice,  to  make,  use,  or  vend 
the  article  so  patented.  [See  Kevised  Statutes,  Section 
4900.] 

SECTION  39.  And  be  it  further  enacted,  That  if  any  person 
shall,  in  any  manner,  mark  upon  any  thing  made,  used,  or 
sold  by  him  for  which  he  has  not  obtained  a  patent,  the  name 
or  any  imitation  of  the  name  of  any  person  who  has  obtained 
a  patent  therefor,  without  the  consent  of  such  patentee,  or  his 
assigns  or  legal  representatives  ;  or  shall  in  any  manner  mark 


I 

THE   PATENT   STATUTES.  583 

upon  or  affix  to  any  such  patented  article  the  word  "  patent " 
or  "  patentee,"  or  the  words  "  letters-patent,"  or  any  word 
of  like  import,  with  intent  to  imitate  or  counterfeit  the  mark 
or  device  of  the  patentee,  without  having  the  license  or  con- 
sent of  such  patentee  or  his  assigns  or  legal  representatives  ; 
or  shall  in  any  manner  mark  upon  or  affix  to  any  unpatented 
article  the  word  "  patent,"  or  any  word  importing  that  the 
same  is  patented,  fer  the  purpose  of  deceiving  the  public,  he 
shall  be  liable  for  every  such  offence  to  a  penalty  of  not  less 
than  one  hundred  dollars,  with  costs  ;  one  moiety  of  said 
penalty  to  the  person  who  shall  sue  for  the  same,  and  the  other 
to  the  use  of  the  United  States,  to  be  recovered  by  suit  in  any 
district  court  of  the  United  States  within  whose  jurisdiction 
such  offence  may  have  been  committed.  [See  Revised  Stat- 
utes, Section  4901.] 

SECTION  40.  And  be  it  further  enacted,  That  any  citizen  of 
the  United  States,  who  shall  have  made  any  new  invention  or 
discovery,  and  shall  desire  further  time  to  mature  the  same, 
may,  on  payment  of  the  duty  required  by  law,  file  in  the 
Patent  Office  a  caveat  setting  forth  the  design  thereof,  and  of 
its  distinguishing  characteristics,  and  praying  protection  of  his 
right  until  he  shall  have  matured  his  invention  ;  and  such 
caveat  shall  be  filed  in  the  confidential  archives  of  the  office 
and  preserved  in  secrecy,  and  shall  be  operative  for  the  term 
of  one  year  from  the  filing  thereof  ;  and  if  application  shall 
be  made  within  the  year  by  any  other  person  for  a  patent  with 
which  such  caveat  would  in  any  manner  interfere,  the  com- 
missioner shall  deposit  the  description,  specification,  draw- 
ings, and  model  of  such  application  in  like  manner  in  the  con- 
fidential archives  of  the  office,  and  give  notice  thereof,  by 
mail,  to  the  person  filing  the  caveat,  who,  if  he  would  avail 
himself  of  his  caveat,  shall  file  his  description,  specification, 
drawings,  and  model  within  three  months  from  the  time  of 
placing  said  notice  in  the  post-office  in  Washington,  with  the 
usual  time  required  for  transmitting  it  to  the  caveator  added 
thereto,  which  time  shall  be  indorsed  on  the  notice.  And  an 
alien  shall  have  the  privilege  herein  granted,  if  he  shall  have 
resided  in  the  United  States  one  year  next  preceding  the  filing 


584:  THE   PATENT   STATUTES. 

of  his  caveat,  and  made  oath  of  his  intention  to  become  a  citi- 
zen. [See  Revised  Statutes,  Section  4902.] 

SECTION  41.  And  be  it  further  enacted,  That  whenever,  on 
examination,  any  claim  for  a  patent  is  rejected  for  any  reason 
whatever,  the  commissioner  shall  notify  the  applicant  thereof, 
giving  him  briefly  the  reasons  for  such  rejection,  together  with 
such  information  and  references  as  may  be  useful  in  judging 
of  the  propriety  of  renewing  his  application  or  of  altering  his 
specification  ;  and  if,  after  receiving  such  notice,  the  applicant 
shall  persist  in  his  claim  for  a  patent,  with  or  without  altering 
his  specifications,  the  commissioner  shall  order  a  re-examina- 
tion of  the  case.  [See  Revised  Statutes,  Section  4903.] 

SECTION  42.  And  be  it  further  enacted,  That  whenever  an 
application  is  made  for  a  patent  which,  in  the  opinion  of  the 
commissioner,  would  interfere  with  any  pending  application, 
or  with  any  unexpired  patent,  he  shall  give  notice  thereof  to 
the  applicants,  or  applicant  and  patentee,  as  the  case  may  be, 
and  shall  direct  the  primary  examiner  to  proceed  to  determine 
the  question  of  priority  of  invention.  And  the  commissioner 
may  issue  a  patent  to  the  party  who  shall  be  adjudged  the 
prior  inventor,  unless  the  adverse  party  shall  appeal  from  the 
decision  of  the  primary  examiner,  or  of  .the  board  of  examiners- 
in-chief,  as  the  case  may  be,  within  such  time,  not  less  than 
twenty  days,  as  the  commissioner  shall  prescribe.  [See  Re- 
vised Statutes,  Section  4904.] 

SECTION  43.  And  be  it  further  enacted,  That  the  commis- 
sioner may  establish  rules  for  taking  affidavits  and  depositions 
required  in  cases  pending  in  the  Patent  Office,  and  such  af- 
fidavits and  depositions  may  be  taken  before  any  officer  author- 
ized by  law  to  take  depositions  to  be  used  in  the  courts  of  the 
United  States,  or  of  the  State  where  the  officer  resides.  [See 
Revised  Statutes,  Section  4905.] 

SECTION  44.  And,  be  it  further  enacted,  That  the  clerk  of 
any  court  of  the  United  States,  for  any  district  or  territory 
wherein  testimony  is  to  be  taken  for  use  in  any  contested  case 
pending  in  the  Patent  Office,  shall,  upon  the  application  of 
any  party  thereto,  or  his  agent  or  attorney,  issue  [a]  subpO3na 
for  any  witness  residing  or  being  within  said  district  or  terri- 


* 

THE    PATENT    STATUTES.  585 

tory,  commanding  him  to  appear  and  testify  before  any  officer 
in  said  district  or  territory  authorized  to  take  depositions  and 
affidavits,  at  any  time  and  place  in  the  subpoena  stated  ;  and  if 
any  witness,  after  being  duly  served  with  such  subpoena,  shall 
neglect  or  refuse  to  appear,  or  after  appearing  shall  refuse  to 
testify,  the  judge  of  the  court  whose  clerk  issued  the  subpoena, 
may,  on  proof  of  such  neglect  or  refusal,  enforce  obedience  to 
the  process,  or  punish  the  disobedience  as  in  other  like  cases. 
[See  Revised  Statutes,  Sections  4906  and  4908.] 

SECTION  45.  And  be  it  further  enacted,  That  every  witness 
duly  subpoanaed  and  in  attendance  shall  be  allowed  the  same 
fees  as  are  allowed  to  witnesses  attending  the  courts  of  the 
United  States,  but  no  witness  shall  be  required  to  attend  at  any 
place  more  than  forty  miles  from  the  place  where  the  subpoena 
is  served  upon  him,  nor  be  deemed  guilty  of  contempt  for 
disobeying  such  subpoena,  unless  his  fees  and  travelling  ex- 
penses in  going  to,  returning  from,  and  one  day's  attendance 
at  the  place  of  examination,  are  paid  or  tendered  him  at  the 
time  of  the  service  of  the  subpoena  ;  nor  for  refusing  to  dis- 
close any  secret  invention  or  discovery  made  or  owned  by  him- 
self. [See  Revised  Statutes,  Sections  4906,  4907,  and 
4908.] 

SECTION  46.  And  be  it  further  enacted,  That  every  appli- 
cant for  a  patent  or  the  reissue  of  a  patent,  any  of  the  claims 
of  which  have  been  twice  rejected,  and  every  party  to  an  in- 
terference, may  appeal  from  the  decision  of  the  primary  ex- 
aminer, or  of  the  examiner  in  charge  of  interference[s],  in 
such  case  to  the  board  of  examiriers-in-chief,  having  once  paid 
the  fee  for  such  appeal  provided  by  law.  [See  Revised  Stat- 
utes, Section  4909.] 

SECTION  47.  And  be  it  further  enacted,  That  if  such  party 
is  dissatisfied  with  the  decision  of  the  examiners-in-chief,  he 
may,  on  payment  of  the  duty  required  by  law,  appeal  to  the 
commissioner  in  person.  [See  Revised  Statutes,  Section 
4910.] 

SECTION  48.  And  be  it  further  enacted,  That  if  such  party, 
except  a  party  to  an  interference,  is  dissatisfied  with  the  deci- 
sion of  the  commissioner,  he  may  appeal  to  the  Supreme  Court 


586  THE    PATENT    STATUTES. 

of  the  District  of  Columbia,  sitting  in  bane.  [See  Revised 
Statutes,  Section  4911.] 

SECTION  49.  And  be  it  further  enacted,  That  when  an  ap- 
peal is  taken  to  the  Supreme  Court  of  the  District  of  Colum- 
bia, the  appellant-  shall  give  notice  thereof  to  the  commis- 
sioner, and  file  in  the  Patent  Office,  within  such  time  as  the 
commissioner  shall  appoint,  his  reasons  of  appeal,  specifically 
set  forth  in  writing.  [See  Revised  Statutes,  Section  4912.] 

SECTION  50.  And  be  it  further  enacted.  That  it  shall  be  the 
duty  of  said  court,  on  petition,  to  hear  and  determine  such 
appeal,  and  to  revise  the  decision  appealed  from  in  a  summary 
way,  on  the  evidence  produced  before  the  commissioner,  at 
such  early  and  convenient  time  as  the  court  may  appoint, 
notifying  the  commissioner  of  the  time  and  place  of  hearing  ; 
and  the  revision  shall  be  confined  to  the  points  set  forth  in  the 
reasons  of  appeal.  And  after  hearing  the  case,  the  court  shall 
return  to  the  commissioner  a  certificate  of  its  proceedings  and 
decision,  which  shall  be  entered  of  record  in  the  Patent 
Office,  and  govern  the  further  proceedings  in  the  case.  But 
no  opinion  or  decision  of  the  court  in  any  such  case  shall  pre- 
clude any  person  interested  from  the  right  to  contest  the 
validity  of  such  patent  in  any  court  wherein  the  same  may  be 
called  in  question.  [See  Revised  Statutes,  Section  4914.] 

SECTION  51.  And  be  it  further  enacted,  That  on  receiving 
notice  of  the  time  and  place  of  hearing  such  appeal,  the  com- 
missioner shall  notify  all  parties  who  appear  to  be  interested 
therein  in  such  manner  as  the  court  may  prescribe.  The 
party  appealing  shall  lay  before  the  court  certified  copies  of  all 
the  original  papers  and  evidence  in  the  case,  and  the  commis- 
sioner shall  furnish  it  with  the  grounds  of  his  decision,  fully 
set  forth  in  writing,  touching  all  the  points  involved  by  the 
reasons  of  appeal.  And  at  the  request  of  any  party  interested, 
or  of  the  court,  the  commissioner  and  the  examiners  may  be 
examined  under  oath,  in  explanation  of  the  principles  of  the 
machine  or  other  thing  for  which  a  patent  is  demanded.  [See 
Revised  Statutes,  Section  4913.] 

SECTION  52.  And  be  it  further  enacted,  That  whenever  a 
patent  on  application  is  refused,  for  any  reason  whatever, 


THE    PATENT   STATUTES.  587 

either  by  the  commissioner  or  by  the  Supreme  Court  of  the 
District  of  Columbia  upon  appeal  from  the  commissioner,  the 
applicant  may  have  remedy  by  bill  in  equity  ;  and  the  court 
having  cognizance  thereof,  on  notice  to  adverse  parties  and 
other  due  proceedings  had,  may  adjudge  that  such  applicant 
is  entitled,  according  to  law,  to  receive  a  patent  for  his  inven- 
tion, as  specified  in  his  claim,  or  for  any  part  thereof,  as  the 
facts  in  the  case  may  appear.  And  such  adjudication,  if  it  be 
in  favor  of  the  right  of  the  applicant,  shall  authorize  the  com- 
missioner to  issue  such  patent,  on  the  applicant  filing  in  the 
Patent  Office  a  copy  of  the  adjudication,  and  otherwise  com- 
plying with  the  requisitions  of  law.  And  in  all  cases  where 
there  is  no  opposing  party  a  copy  of  the  bill  shall  be  served  on 
the  commissioner,  and  all  the  expenses  of  the  proceeding  shall 
be  paid  by  the  applicant,  whether  the  final  decision  is  in  his 
favor  or  not.  [See  Revised  Statutes,  Section  4915.] 

SECTION  53.  And  be  it  further  enacted,  That  whenever  any 
patent  is  inoperative  or  invalid,  by  reason  of  a  defective  or  in- 
sufficient specification,  or  by  reason  of  the  patentee  claiming 
as  his  own  invention  or  discovery  more  than  he  had  a  right  to 
claim  as  new,  if  the  error  has  arisen  by  inadvertence,  accident, 
or  mistake,  and  without  any  fraudulent  or  deceptive  inten- 
tion, the  commissioner  shall,  on  the  surrender  of  such  a  pat- 
ent and  the  payment  of  the  duty  required  by  law,  cause  a  new 
patent  for  the  same  invention,  and  in  accordance  with  the  cor- 
rected specification,  to  be  issued  to  the  patentee,  or,  in  the 
case  of  his  death  or  assignment  of  the  whole  or  any  undivided 
part  of  the  original  patent,  to  his  executors,  administrators,  or 
assigns,  for  the  unexpired  part  of  the  term  of  the  original  pat- 
ent, the  surrender  of  which  shall  take  effect  upon  the  issue  of 
the  amended  patent ;  and  the  commissioner  may,  in  his  dis- 
cretion, cause  several  patents  to  be  issued  for  distinct  and 
separate  parts  of  the  thing  patented,  upon  demand  of  the  ap- 
plicant, and  upon  payment  of  the  required  fee  for  a  reissue 
for  each  of  such  reissued  letters-patent.  And  the  specifica- 
tions and  claim  in  every  such  case  shall  be  subject  to  revision 
and  restriction  in  the  same  manner  as  original  applications  are. 
And  the  patent  so  reissued,  together  with  the  corrected  speci- 


588  THE   PATENT   STATUTES. 

fication,  shall  have  the  effect  and  operation  in  law,  on  the  trial 
of  all  actions  for  causes  thereafter  arising,  as  though  the  same 
had  been  originally  filed  in  such  corrected  form  ;  but  no  new 
matter  shall  be  introduced  into  the  specification,  nor  in  case  of 
a  machine  patent  shall  the  model  or  drawings  be  amended, 
except  each  by  the  other  ;  but  when  there  is  neither  model 
nor  drawing,  amendments  may  be  made  upon  proof  satisfac- 
tory to  the  commissioner  that  such  new  matter  or  amendment 
was  a  part  of  the  original  invention,  and  was  omitted  from  the 
specification  by  inadvertence,  accident,  or  mistake,  as  afore- 
said. [See  Revised  Statutes,  Section  4916.] 

SECTION  54.  And  be  it  further  enacted,  That  whenever, 
through  inadvertence,  accident,  or  mistake,  and  without  any 
fraudulent  or  deceptive  intention,  a  patentee  has  claimed  more 
than  that  of  which  he  was  the  original  or  first  inventor  or  dis- 
coverer, his  patent  shall  be  valid  for  all  that  part  which  is 
truly  and  justly  his  own,  provided  the  same  is  a  material  or 
substantial  part  of  the  thing  patented  ;  and  any  such  patentee, 
his  heirs  or  assigns,  whether  of  the  whole  or  any  sectional  in- 
terest therein,  may,  on  payment  of  the  duty  required  by  law, 
make  disclaimer  of  such  parts  of  the  thing  patented  as  he  shall 
not  choose  to  claim  or  to  hold  by  virtue  of  the  patent  or  as- 
signment, stating  therein  the  extent  of  his  interest  in  such 
patent ;  said  disclaimer  shall  be  in  writing,  attested  by  one  or 
more  witnesses,  and  recorded  in  the  Patent  Office,  and  it  shall 
thereafter  be  considered  as  part  of  the  original  specification  to 
the  extent  of  the  interest  possessed  by  the  claimant  and  by 
those  claiming  under  him  after  the  record  thereof.  But  no 
such  disclaimer  shall  affect  any  action  pending  at  the  time  of 
its  being  filed,  except  so  far  as  may  relate  to  the  question  of 
unreasonable  neglect  or  delay  in  filing  it.  [See  Revised  Stat- 
utes, Section  4917.] 

SECTION  55.  And  be  it  further  enacted,  That  all  actions, 
suits,  controversies,  and  cases  arising  under  the  patent  laws  of 
the  United  States  shall  be  originally  cognizable,  as  well  in 
equity  as  at  law,  by  the  circuit  courts  of  the  United  States,  or 
any  district  court  having  the  powers  and  jurisdiction  of  a  cir- 
cuit court,  or  by  the  Supreme  Court  of  the  District  of  Colum- 


THE    PATENT    STATUTES.  589 

bia,  or  of  any  territory  ;  and  the  court  shall  have  power,  upon 
bill  in  equity  filed  by  any  party  aggrieved,  to  grant  injunc- 
tions according  to  the  course^  and  principles  of  courts  of 
equity,  to  prevent  the  violation  of  any  right  secured  by 
patent,  on  such  terms  as  the  court  may  deem  reasonable  ;  and 
upon  a  decree  being  rendered  in  any  such  case  for  an  infringe- 
ment, the  claimant  [complainant]  shall  be  entitled  to  recover, 
in  addition  to  the  profits  to  be  accounted  for  by  the  defend- 
ant, the  damages  the  complainant  has  sustained  thereby,  and 
the  court  shall  assess  the  same  or  cause  the  same  to  be  assessed 
under  its  direction,  and  the  court  shall  have  the  same  powers 
to  increase  the  same  in  its  discretion  that  are  given  by  this  act 
to  increase  the  damages  found  by  verdicts  in  actions  upon  the 
case  ;  but  all  actions  shall  be  brought  during  the  term  for 
which  the  letters-patent  shall  be  granted  or  extended,  or  with- 
in six  years  after  the  expiration  thereof.  [See  Revised  Stat- 
utes, Section  629,  1  9,  and  Section  4921.] 

SECTION  56.  And  be  it  further  enacted,  That  a  writ  of 
error  or  appeal  to  the  Supreme  Court  of  the  United  States 
shall  lie  from  all  judgments  and  decrees  of  any  circuit  court, 
or  of  any  district  court  exercising  the  jurisdiction  of  a  circuit 
court,,  or  of  the  Supreme  Court  of  the  District  of  Columbia, 
or  of  any  Territory,  in  any  action,  suit,  controversy,  or  case,  at 
law  or  in  equity,  touching  patent  rights,  in  the  same  manner 
and  under  the  same  circumstances  as  in  other  judgments  and 
decrees  of  such  circuit  courts,  without  regard  to  the  sum  or 
value  in  controversy.  [See  Revised  Statutes,  Section  699.] 

SECTION  57.  And  ~be  it  further  enacted,  That  written  or 
printed  copies  of  any  records,  books,  papers,  or  drawings  be- 
longing to  the  Patent  Office,  and  of  letters-patent  under  the 
signature  of  the  commissioner  or  acting  commissioner,  with 
the  seal  of  office  affixed,  shall  be  competent  evidence  in  all 
cases  wherein  the  originals  could  be  evidence,  and  any  person 
making  application  therefor,  and  paying  the  fee  required  by 
law,  shall  have  certified  copies  thereof.  And  copies  of  the 
specifications  and  drawings  of  foreign  letters-patent,  certified 
in  like  manner,  shall  be  prima  facie  evidence  of  the  fact  of 
the  granting  of  such  foreign  letters-patent,  and  of  the  date 


590  THE    PATENT   STATUTES. 

and  contents  thereof.     [See  Kevised  Statutes,  Sections  892 
and  893.] 

SECTION  58.  And  be  it  further  enacted,  That  whenever 
there  shall  be  interfering  patents,  any  person  interested  in  any 
one  of  such  interfering  patents,  or  in  the  working  of  the  in- 
vention claimed  under  either  of  such  patents,  may  have  relief 
against  the  interfering  patentee,  and  all  parties  interested 
under  him,  by  suit  in  equity  against  the  owners  of  the  inter- 
fering patent  ;  and  the  court  having  cognizance  thereof,  as 
hereinbefore  provided,  on  notice  to  adverse  parties,  and  other 
due  proceedings  had  according  to  the  course  of  equity,  may 
adjudge  and  declare  either  of  the  patents  void  in  whole  or  in 
part,  or  inoperative,  or  invalid  in  any  particular  part  of  the 
United  States,  according  to  the  interest  of  the  parties  in  the 
patent  or  the  invention  patented.  But  no  such  judgment  or 
adjudication  shall  affect  the  rights  of  any  person  except  the 
parties  to  the  suit  and  those  deriving  title  under  them  subse- 
quent to  the  rendition  of  such  judgment.  [See  Revised  Stat- 
utes, Section  4918.] 

SECTION  59.  And  be  it  further  enacted,  That  damages  for 
the  infringement  of  any  patent  may  be  recoTered  by  action  on 
the  case  in  any  circuit  court  of  the  United  States,  or  district 
court  exercising  the  jurisdiction  of  a  circuit  court,  or  in  the 
Supreme  Court  of  the  District  of  Columbia,  or  of  any  Terri- 
tory, in  the  name  of  the  party  interested,  either  as  patentee, 
assignee,  or  grantee.  And  whenever  in  any  such  action  a 
verdict  shall  be  rendered  for  the  plaintiff,  the  court  may  enter 
judgment  thereon  for  any  sum  above  the  amount  found  by  the 
verdict  as  the  actual  damages  sustained,  according  to  the  cir- 
cumstances of  the  case,  not  exceeding  three  times  the  amount 
of  such  verdict,  together  with  the  costs.  [See  Revised  Stat- 
utes, Section  629,  ^  9,  and  Section  4919.] 

SECTION  60.  And  be  it  further  enacted,  That  whenever, 
through  inadvertence,  accident,  or  mistake,  and  without  any 
wil[l]ful  default  or  intent  to  defraud  or  mislead  the  public,  a 
patentee  shall  have  (in  his  specification)  claimed  to  be  the 
original  and  first  inventor  or  discoverer  of  any  material  or 
substantial  part  of  the  thing  patented,  of  which  he  was  not  the 


THE   PATENT    STATUTES.  591 

original  and  first  inventor  or  discoverer  as  aforesaid,  every  such 
patentee,  his  executors,  administrators,  and  assigns,  whether 
of  the  whole  or  any  sectional  interest  in  the  patent,  may  main- 
tain a  suit  at  law  or  in  equity,  for  the  infringement  of  any 
part  thereof,  which  was  bona  fide  his  own,  provided  it  shall 
be  a  material  and  substantial  part  of  the  thing  patented,  and 
be  definitely  distinguishable  from  the  parts  so  claimed,  with- 
out right  as  aforesaid,  notwithstanding  the  specifications  may 
embrace  more  than  that  of  which  the  patentee  was  the  origi- 
nal or  first  inventor  or  discoverer.  But  in  every  such  case  in 
which  a  judgment  or  decree  shall  be  rendered  for  the  plaintiff, 
no  costs  shall  be  recovered  unless  the  proper  disclaimer  has 
been  entered  at  the  Patent  Office  before  the  commencement 
of  the  suit ;  nor  shall  he  be  entitled  to  the  benefits  of  this 
section  if  he  shall  have  unreasonably  neglected  or  delayed 
to  enter  said  disclaimer.  [See  Revised  Statutes,  Section 
4922.] 

SECTION  61.  And  be  it  further  enacted,  That  in  any  action 
for  infringement  the  defendant  may  plead  the  general  issue, 
and  having  given  notice  in  writing  to  the  plaintiff  or  his  at- 
torney, thirty  days  before,  may  prove  on  trial  any  one  or  more 
of  the  following  special  matters  : — 

First.  That  for  the  purpose  of  deceiving  the  public  the  de- 
scription and  specification  filed  by  the  patentee  in  the  Patent 
Office  was  made  to  contain  less  than  the  whole  truth  relative 
to  his  invention  or  discovery,  or  more  than  is  necessary  to 
produce  the  desired  effect ;  or, 

Second.  That  he  had  surreptitiously  or  unjustly  obtained 
the  patent  for  that  which  was  in  fact  invented  by  another, 
who  was  using  reasonable  diligence  in  adapting  and  perfecting 
the  same  ;  or, 

Third.  That  it  had  been  patented  or  described  in  some 
printed  publication  prior  to  his  supposed  invention  or  discov- 
ery thereof  ;  or, 

Fourth.  That  he  was  not  the  original  and  first  inventor  or 
discoverer  of  any  material  and  substantial  part  of  the  thing 
patented  ;  or, 

Fifth.  That  it  had  been  in  public  use  or  on  sale  in  this 


592  THE    PATENT    STATUTES. 

country,  for  more  than  two  years  before  his  application  for  a 
patent,  or  had  been  abandoned  to  the  public. 

And  in  notices  as  to  proof  of  previous  invention,  knowledge, 
or  use  of  the  thing  patented,  the  defendant  shall  state  the 
names  of  patentees  and  the  dates  of  their  patents,  and  when 
granted,  and  the  names  and  residences  of  the  persons  alleged 
to  have  invented,  or  to  have  had  the  prior  knowledge  of  the 
thing  patented,  and  where  and  by  whom  it  had  been  used  ; 
and  if  any  one  or  more  of  the  special  matters  alleged  shall  be 
found  for  the  defendant,  judgment  shall  be  rendered  for  him 
with  costs.  And  the  like  defences  may  be  pleaded  in  any  suit 
in  equity  for  relief  against  an  alleged  infringement ;  and 
proofs  of  the  same  may  be  given  upon  like  notice  in  the  an- 
swer of  the  defendant,  and  with  the  like  effect.  [See  Re- 
vised Statutes,  Section  4920.] 

SECTION  62.  And  be  it  further  enacted,  That  whenever  it 
shall  appear  that  the  patentee,  at  the  time  of  making  his  appli- 
cation for  the  patent,  believed  himself  to  be  the  original  and 
first  inventor  or  discoverer  of  the  thing  patented,  the  same 
shall  not  be  held  to  be  void  on  account  of  the  invention  or 
discovery,  or  any  part  thereof,  having  been  known  or  used  in 
a  foreign  country,  before  his  invention  or  discovery  thereof, 
if  it  had  not  been  patented  or  described  in  a  printed  publica- 
tion. [See  Revised  Statutes,  Section  4923.] 

SECTION  63.  And  be  it  further  enacted,  That  where  the  pat- 
entee of  any  invention  or  discovery,  the  patent  for  which  was 
granted  prior  to  the  second  day  of  March,  eighteen  hundred 
and  sixty-one,  shall  desire  an  extension  of  his  patent  beyond 
the  original  term  of  its  limitation,  he  shall  make  application 
therefor,  in  writing,  to  the  commissioner,  setting  forth  the 
reasons  why  such  extension  should  be  granted  ;  and  he  shall 
also  furnish  a  written  statement  under  oath  of  the  ascertained 
value  of  the  invention  or  discovery,  and  of  his  receipts  and 
expenditures  on  account  thereof,  sufficiently  in  detail  to  ex- 
hibit a  true  and  faithful  account  of  the  loss  and  profit  in  any 
manner  accruing  to  him  by  reason  of  said  invention  or  discov- 
ery. And  said  application  shall  be  filed  not  more  than  six 
months  nor  less  than  ninety  days  before  the  expiration  of  the 


THE    PATENT   STATUTES.  593 

original  term  of  the  patent  ;  and  no  extension  shall  be  granted 
after  the  expiration  of  said  original  term.  [See  Revised  Stat- 
utes, Section  4924.] 

SECTION  64.  And  be  it  further  enacted,  That  upon  the  re- 
ceipt of  such  application,  and  the  payment  of  the  duty  re- 
quired by  law,  the  commissioner  shall  cause  to  be  published  in 
one  newspaper  in  the  city  of  Washington,  and  in  such  other 
papers  published  in  the  section  of  the  country  most  interested 
adversely  to  the  extension  of  the  patent  as  he  may  deem 
proper,  for  at  least  sixty  days  prior  to  the  day  set  for  hearing 
the  case,  a  notice  of  such  application,  and  of  the  time  and 
place  when  and  where  the  same  will  be  considered,  that  any 
person  may  appear  and  show  cause  why  the  extension  should 
not  be  granted.  [See  Revised  Statutes,  Section  4925.] 

SECTION  65.  And  be  it  further  enacted,  That  on  the  publica- 
tion of  such  notice,  the  commissioner  shall  refer  the  case  to 
the  principal  examiner  having  charge  of  the  class  of  inventions 
to  which  it  belongs,  who  shall  make  to  said  commissioner  a 
full  report  of  the  case,  and  particularly  whether  the  invention 
or  discovery  was  new  and  patentable  when  the  original  patent 
was  granted.  [See  Revised  Statutes,  Section  4926.] 

SECTION  66.  And  be  it  further  enacted,  That  the  commis- 
sioner shall,  at  the  time  and  place  designated  in  the  published 
notice,  hear  and  decide  upon  the  evidence  produced,  both  for 
and  against  the  extension  ;  and  if  it  shall  appear  to  his  satis- 
faction that  the  patentee,  without  neglect  or  fault  on  his  part, 
has  failed  to  obtain  from  the  use  and  sale  of  his  invention  or 
discovery,  a  reasonable  remuneration  for  the  time,  ingenuity, 
and  expense  bestowed  upon  it,  and  the  introduction  of  it  into 
use,  and  that  it  is  just  and  proper,  having  due  regard  to  the 
public  interest,  that  the  term  of  the  patent  should  be  extended, 
the  said  commissioner  shall  make  a  certificate  thereon,  renew- 
ing and  extending  the  said  patent  for  the  term  of  soven  years 
from  the  expiration  of  the  h'rst  term,  which  certificate  shall  be 
recorded  in  the  Patent  Office,  and  thereupon  the  said  patent 
shall  have  the  same  effect  in  law  as  though  it  had  been  origi- 
nally granted  for  twenty-one  years~  [See  Revised  Statutes, 
Section  4927.] 


594  THE   PATENT   STATUTES. 

SECTION  67.  And  he  it  further  enacted,  That  the  benefit 
of  the  extension  of  a  patent  shall  extend  to  the  assignees  and 
grantees  of  the  right  to  use  the  thing  patented  to  the  extent 
of  their  interest  therein.  [See  Revised  Statutes,  Section  4928.] 

SECTION  68.  And  be  it  further  enacted,  That  the  following 
shall  be  the  rates  for  patent  fees  : — 

On  filing  each  original  application  for  a  patent,  fifteen 
dollars. 

On  issuing  each  original  patent,  twenty  dollars. 

On  filing  each  caveat,  ten  dollars. 

On  every  application  for  the  reissue  of  a  patent,  thirty 
dollars. 

On  filing  each  disclaimer,  ten  dollars. 

On  every  application  for  the  extension  of  a  patent,  fifty 
dollars. 

On  the  granting  of  every  extension  of  a  patent,  fifty  dollars. 

On  an  appeal  for  the  first  time  from  the  primary  examiners 
to  the  examiners-in-chief ,  ten  dollars. 

On  every  appeal  from  the  examiners-in-chief  to  the  com- 
missioner, twenty  dollars. 

For  certified  copies  of  patents  and  other  papers,  ten  cents 
per  hundred  words. 

For  recording  every  assignment,  agreement,  power  of  at- 
torney, or  other  paper,  of  three  hundred  words  or  under,  one 
dollar  ;  of  over  three  hundred  and  under  one  thousand  words, 
two  dollars  ;  of  over  one  thousand  words,  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making  them. 
[See  Revised  Statutes,  Section  4934.] 

SECTION  69.  And  be  it  further  enacted,  That  patent  fees 
may  be  paid  to  the  commissioner,  or  to  the  treasurer  or  any  of 
the  assistant  treasurers  of  the  United  States,  or  to  any  of  the 
designated  depositaries,  national  banks,  or  receivers  of  public 
money,  designated  by  the  Secretary  of  the  Treasury  for  that 
purpose,  who  shall  give  the  depositor  a  receipt  or  certificate 
of  deposit  therefor.  And  all  money  received  at  the  Patent 
Office,  for  any  purpose,  or  from  any  source  whatever,  shall  be 
paid  into  the  treasury  as  received,  without  any  deduction 
whatever  ;  and  all  disbursements  for  said  office  shall  be  made 


THE   PATENT    STATUTES.  595 

by  the  disbursing  clerk  of  the  Interior  Department.  [See 
Revised  Statutes,  Sections  496  and  4935.] 

SECTION  70.  And  be  it  further  enacted,  That  the  Treasurer 
of  the  United  States  is  authorized  to  pay  back  any  sum  or 
sums  of  money  to  any  person  who  shall  have  paid  the  same 
into  the  treasury,  or  to  any  receiver  or  depositary,  to  the 
credit  of  the  treasurer,  as  for  fees  accruing  at  the  Patent  Office 
through  mistake,  certificate  thereof  being  made  to  said  treas- 
urer by  the  Commissioner  of  Patents.  [See  Revised  Statutes, 
Section  4936.] 

SECTION  71.  And  be  it  further  enacted,  That  any  person 
who,  by  his  own  industry,  genius,  efforts,  and  expense,  has 
invented  or  produced  any  new  and  original  design  for  a  manu- 
facture, bust,  statue,  alto-relievo,  or  bas-relief  ;  any  new  and 
original  design  for  the  printing  of  wool[l]en,  silk,  cotton,  or 
other  fabrics  ;  any  new  and  original  impression,  ornament, 
pattern,  print,  or  picture,  to  be  printed,  painted,  cast,  or 
otherwise  placed  on  or  worked  into  any  article  of  manufact- 
ure ;  or  any  new,  useful,  and  original  shape  or  configuration 
of  any  article  of  manufacture,  the  same  not  having  been 
known  or  used  by  others  before  his  invention  or  production 
thereof,  or  patented  or  described  in  any  printed  publication, 
may,  upon  payment  of  the  duty  required  by  law,  and  other 
due  proceedings  had  the  same  as  in  cases  of  inventions  or  dis- 
coveries, obtain  a  patent  therefor.  [See  Revised  Statutes, 
Section  4929.] 

SECTION  72.  And  be  it  further  enacted,  That  the  commis- 
sioner may  dispense  with  models  of  designs  when  the  design 
can  be  sufficiently  represented  by  drawings  or  photographs. 
[See  Revised  Statutes,  Section  4930.] 

SECTION  73.  And  be  it  further  enacted,  That  patents  for 
designs  may  be  granted  for  the  term  of  three  years  and  six 
months,  or  for  seven  years,  or  for  fourteen  years,  as  the  appli- 
cant may,  in  his  application,  elect.  [See  Revised  Statutes, 
Section  4931.] 

SECTION  74.  And  be  it  further  enacted,  That  patentees  of 
designs  issued  prior  to  March  two,  eighteen  hundred  and  sixty- 
one,  shall  be  entitled  to  extension  of  their  respective  patents 


596  THE    PATENT    STATUTES. 

for  tlie  term  of  seven  years,  in  the  same  manner  and  under  the 
same  restrictions  as  are  provided  for  the  extension  of  patents 
for  inventions  or  discoveries  issued  prior  to  the  second  day  of 
March,  eighteen  hundred  and  sixty- one.  [See  Re  vised  Stat- 
utes, Section  4932.] 

SECTION  75.  And  be  it  further  enacted,  That  the  following 
shall  be  the  rates  of  fees  in  design  cases  : — 

For  three  years  and  six  months,  ten  dollars. 

For  seven  years,  fifteen  dollars. 

For  fourteen  years,  thirty  dollars. 

For  all  other  cases  in  which  fees  are  required,  the  same 
rates  as  in  cases  of  inventions  or  discoveries.  [See  Revised 
Statutes,  Section  4934.] 

SECTION  76.  And  be  it  further  enacted,  That  all  the  regula- 
tions and  provisions  which  apply  to  the  obtaining  or  protection 
of  patents  for  inventions  or  discoveries,  not  inconsistent  with 
the  provisions  of  this  act,  shall  apply  to  patents  for  designs. 
[See  Revised  Statutes,  Section  4933.] 

[Sections  77  to  110,  inclusive,  refer  to  trade -marks  and  copy- 
rights, and  not  to  patents.] 

SECTION  111.  And  be  it  further  enacted,  That  the  acts  and 
parts  of  acts  set  forth  in  the  schedule  of  acts  cited,  hereto  an- 
nexed, are  hereby  repealed,  without  reviving  any  acts  or  parts 
of  acts  repealed  by  any  of  said  acts,  or  by  any  clause  or  pro- 
visions therein  :  Provided,  however,  That  the  repeal  hereby 
enacted  shall  not  affect,  impair,  or  take  away  any  right  exist- 
ing under  any  of  said  laws  ;  but  all  actions  and  causes  of  ac- 
tion, both  in  law  or  in  equity,  which  have  arisen  under  any  of 
said  laws,  may  be  commenced  and  prosecuted,  and  if  already 
commenced  may  be  prosecuted  to  final  judgment  and  execu- 
tion, in  the  same  manner  as  though  this  act  had  not  been 
passed,  excepting  that  the  remedial  provisions  of  this  act  shall 
be  applicable  to  all  suits  and  proceedings  hereafter  com- 
menced :  And  provided  also,  That  all  applications  for  patents 
pending  at  the  time  of  the  passage  of  this  act,  in  cases  where 
the  duty  has  been  paid,  shall  be  proceeded  with  and  acted  on 
in  the  same  manner  as  though  filed  after  the  passage  thereof  : 
And  provided  further,  That  all  offences  which  are  defined 


THE    PATENT   STATUTES.  597 

and  punishable  under  any  of  said  acts,  and  all  penalties  and 
forfeitures  created  thereby  and  incurred  before  this  act  takes 
effect,  may  be  prosecuted,  sued  for,  and  recovered,  and  such 
offences  punished  according  to  the  provision  of  said  acts, 
which  are  continued  in  force  for  such  purpose. 

APPROVED  July  8,  1870. 

Repealed  June  22,  1874.     Revised  Statutes,  Title  LXXIV. 

PATENT  ACT   OF  MARCH  3,  1871. 

16  STATUTES  AT  LAKGE,  583. 

An  Act  to  amend  an  Act  to  revise,  consolidate,  and  amend 
the  Statutes  relating  to  Patents  and  Copyrights. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
that  part  of  section  thirty-three  of  an  act  entitled  "  An  act 
to  revise,  consolidate,  and  amend  the  statutes  relating  to  pat- 
ents and  copyrights,"  approved  July  eighth,  eighteen  hundred 
and  seventy,  which  requires  that,  in  case  of  application  by  as- 
signee or  assignees  for  reissue  of  letters-patent,  the  application 
shall  be  made  and  the  specification  sworn  to  by  the  inventor 
or  discoverer,  if  living,  shall  not  be  construed  to  apply  to  pat- 
ents issued  and  assigned  prior  to  July  eighth,  eighteen  hun- 
dred and  seventy.  * 

APPROVED  March  3,  1871. 

Repealed  June  22,  1874.     Revised  Statutes,  Title  LXXIV. 

PATENT   ACT   OF  MARCH  24,  1871. 

17  STATUTES  AT  LARGE,  2. 
An  Act  to  further  regulate  the  publication  of  the  Specifications 

and  Drawings  of  the  Patent  Office. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
if,  in  the  judgment  of  the  joint  committee  on  printing,  the 
provisions  of  the  joint  resolution  providing  for  publishing 
specifications  and  drawings  of  the  Patent  Office,  approvc'd 
January  eleventh,  eighteen  hundred  and  seventy-one,  can  bo 


598 


THE   PATENT    STATUTES. 


performed  under  the  direction  of  the  Commissioner  of  Patents 
more  advantageously  than  in  the  manner  provided  in  said 
joint  resolution,  it  shall  be  so  done,  under  such  limitations  and 
conditions  as  the  joint  committee  on  printing  may  from  time 
to  time  prescribe. 

SECTION  2.  That  the  price  of  the  printed  copies  of  specifica- 
tions and  drawings  of  patents,  when  uncertified,  shall  be  de- 
termined by  the  Commissioner  of  Patents,  ten  cents  being 
hereby  fixed  as  the  minimum,  and  fifty  cents  as  the  maximum 
price  of  the  same  ;  certified  copies  to  be  sold  at  the  price  fixed 
by  the  patent  act  of  eighteen  hundred  and  seventy. 

APPROVED  March  24,  1871. 

Repealed  June  22,  1874.     Revised  Statutes,  Title  LXXIV. 


THE  REVISED   STATUTES 

RELATING   TO   PATENTS. 


440.  Clerks  and  employes. 

441.  Secretary  of  the  Interior. 

475.  Establishment    of    the    Patent 

Office. 

476.  Officers  and  employes. 

477.  Salaries. 

478.  Seal. 

479.  Bonds    of    Commissioner  and 

chief  clerk. 

480.  Restrictions  upon  officers  and 

employes. 

481.  Duties  of  Commissioner. 

482.  Duties  of  examiners-in-chief. 

483.  Establishment  of  regulations. 

484.  Arrangement  and  exhibition  of 

models,  <tc. 

485.  Disposals  of  models  on  rejected 

applications. 

486.  Library. 

487.  Patent-agents  may  be  refused 

recognition. 

488.  Printing  of  papers  filed. 

489.  Printing  copies  of  claims,  laws, 

decisions,  &c. 

490.  Printing      specifications      and 

drawings. 


491.  Additional   specifications    and 

drawings. 

492.  Lithographing  and  engraving. 

493.  Price  of  copies  of  specifications 

and  drawings. 

494.  Annual  report  of  the  Commis- 

sioner. 

496.  Disbursements  for  Patent-Of- 
fice. 

629.  Jurisdiction  of  Circuit  Courts. 

699.  Writs  of  error  and  appeals, 
without  reference  to  amount. 

892.  Copies  of  records,  &c. ,  of  Patent- 

Office. 

893.  Copies     of      foreign     letters- 

patent. 

894.  Printed  copies  of  specifications 

and  drawings  of  patents. 
973.  Costs    where    disclaimers    are 
necessary. 

4883.  Patents,  how  issued,  attested, 
and  recorded. 

4884.  Their  contents  and  duration. 

4885.  Date  of  patent. 

4886.  What  inventions  are  patenta- 
ble. 


THE    PATENT   STATUTES. 


599 


4887.  Patents  for  inventions  previ- 
ously patented  abroad. 

4888.  ^Requisites  of  specification  and 
claim. 

4889.  Drawings,  when  requisite. 

4890.  Specimens  of  ingredients,  &c. 

4891.  Model,  when  requisite. 

4892.  Oath  required  from  applicant. 

4893.  Examination  and  issuing  pat- 
ent. 

4894.  Limitation  upon  time  of  com- 
pleting application. 

4895.  Patents  granted  to  assignee. 

4896.  When,  and  on  what  oath,  exec- 
utor   or     administrator    may 
obtain  patent. 

4897.  Kenewal     of     application    in 
cases  of  failure  to  pay  fees  in 
season. 

4898.  Assignment  of  patents. 

4899.  Persons  purchasing  of  invent- 
or before  application  may  use 
or  sell  the  thing  purchased. 

4900.  Patented     articles     must    be 
marked  as  such. 

4901.  Penalty  for  falsely  marking  or 
labelling  articles  as  patented. 

4902.  Filing  and  effect  of  caveats. 

4903.  Notice   of    rejection  of  claim 
for  patent  to  be  given  to  ap- 
plicant. 

4904.  Interferences. 

4905.  Affidavits  and  depositions. 

4906.  Subpoenas  to  witnesses. 

4907.  Witness  fees. 

4908.  Penalty  for  failing  to  attend  or 
refusing  to  testify. 

4909.  Appeals  from  primary   exam- 
iners to  examiners-in-chicf. 

4910.  From     examiners-in-chief    to 
Commissioner. 

4911.  From  the  Commissioner  to  the 
supreme  court  D.  C. 

4912.  Notice  of  such  appeal. 


4913.  Proceedings  on  appeal  to  su- 
preme court. 

4914.  Determination  of  such  appeal 
and  its  effect. 

4915.  Patents  obtainable  by  bill  in 
equity. 

4916.  He-issue  of  defective  patents. 

4917.  Disclaimer. 

4918.  Suits  touching  interfering  pat- 
ents. 

4919.  Suits  for  infringement ;  dam- 


4920. 
4921. 

4922. 
4923. 

4924. 
4925. 
4926. 
4927. 

4928. 
4929. 
4930. 
4931. 

4932. 
4933. 
4934. 

4935. 
4936. 


Pleading  and  proof  in  actions 
for  infringement. 
Power  of  courts  to  grant  in- 
junctions and  estimate  dam- 
ages. 

Suit  for  infringement  where 
specification  is  too  broad. 
Patent  not  void  on  account  of 
previous  use  in  foreign  coun- 
try. 

Extension  of  patents  granted 
prior  to  March  2,  1861. 
What  notice  of  application  for 
extension  must  be  given. 
Applications  for  extension  to 
whom  to  be  referred. 
Commissioner  to  hear  and  de- 
cide  the   question  of   exten- 
sion. 

Operation  of  extension. 
Patent  for  designs  authorized. 
Models  of  designs. 
Duration   of   patents  for  de- 
signs. 

Extension  of  patents  for  de- 
signs. 

Patents  for  designs  subject  to 
general  rules  of  patent-law. 
Fees  in  obtaining  patents, 
&c. 

Mode  of  payment. 
Refunding. 


600  THE    PATENT    STATUTES. 

SECTION  440.  There  shall  also  be  in  the  Department  of  the 

Interior  : 

****** 

In  the  Patent  Office  : 

One  chief  clerk,  at  a  salary  of  two  thousand  five  hundred 
dollars  a  year. 

One  examiner  in  charge  of  intsrferences,  at  a  salary  of  two 
thousand  five  hundred  dollars  a  year. 

One  examiner  in  charge  of  trade-marks,  at  a  salary  of  two 
thousand  five  hundred  dollars  a  year. 

Twenty-four  principal  examiners,  at  a  salary  of  two  thou- 
sand five  hundred  dollars  a  year  each. 

Twenty-four  first  assistant  examiners,  at  a  salary  of  one 
thousand  eight  hundred  dollars  a  year  each. 

Twenty-four  second  assistant  examiners  (two  of  whom  may 
be  women),  at  a  salary  of  one  thousand  six  hundred  dollars  a 
year  each. 

Twenty-four  third  assistant  examiners,  at  a  salary  of  one 
thousand  four  hundred  dollars  a  year  each. 

One  librarian,  at  a  salary  of  two  thousand  dollars  a  year. 

One  machinist,  at  a  salary  of  one  thousand  six  hundred 
dollars  a  year. 

Three  skilled  draughtsmen,  at  a  salary  of  one  thousand  two 
hundred  dollars  a  year  each. 

Thirty-five  copyists  of  drawings,  at  a  salary  of  one  thousand 
dollars  a  year  each. 

One  messenger  and  purchasing  clerk,  at  a  salary  of  one 
thousand  dollars  a  year. 

One  skilled  laborer,  at  a  salary  of  one  thousand  two  hundred 
dollars  a  year. 

Eight  attendants  in  the  model-room,  at  a  salary  of  one  thou- 
sand dollars  a  year  each. 

Eight  attendants  in  the  model-room,  at  a  salary  of  nine  hun- 
dred dollars  a  year  each.  [See  prior  patent  statutes  :  Sections 
2  and  3,  1870  ;  Sections  4  and  7,  1861  ;  Sections  1  and  3, 
1848  ;  Section  10,  1837  ;  Section  2,  1836.] 

SECTION  441.  The  Secretary  of  the  Interior  is  charged  with 
supervising  all  public  business  relating  to  *  *  * 


THE    PATENT   STATUTES.  601 

Fifth.  Patents  for  inventions.  [See  prior  patent  statutes  : 
Section  1,  1870  ;  Section  2,  1849.] 

SECTION  475.  There  shall  be  in  the  Department  of  the  In- 
terior an  office  known  as  the  Patent-Office,  where  all  records, 
books,  models,  drawings,  specifications,  and  other  papers  and 
things  pertaining  to  patents  shall  be  safely  kept  and  preserved. 
[See  prior  patent  statutes  :  Section  1,  1870  ;  Section  1,  1836.] 

SECTION  476.  There  shall  be  in  the  Patent-Office  a  Commis- 
sioner of  Patents,  one  Assistant  Commissioner,  and  three  ex- 
aminers-in-chief,  who  shall  be  appointed  by  the  President,  by 
and  with  the  advice  and  consent  of  the  Senate.  All  other 
officers,  clerks,  and  employes  authorized  by  law  for  the  Office 
shall  be  appointed  by  the  Secretary  of  the  Interior,  upon  the 
nomination  of  the  Commissioner  of  Patents.  [See  prior  pat- 
ent statutes  :  Section  2,  1870  ;  Section  2,  1861  ;  Section  1, 
1836.] 

SECTION  477.  The  salaries  of  the  officers  mentioned  in  the 
preceding  section  shall  be  as  follows  : 

The  Commissioner  of  Patents,  four  thousand  five  hundred 
dollars  a  year. 

The  Assistant  Commissioner  of  Patents,  three  thousand  dol- 
lars a  year. 

Three  examiners-in-chief,  three  thousand  dollars  a  year 
each.  [See  prior  patent  statutes  :  Section  4,  1870  ;  Sections 
2  and  4,  1861  ;  Section  11,  1837  ;  Section  1,  1836.] 

SECTION  478.  The  seal  heretofore  provided  for  the  Patent- 
Office  shall  be  the  seal  of  the  Office,  with  which  letters-patent 
and  papers  issued  from  the  Office  shall  be  authenticated.  [See 
prior  patent  statutes  :  Section  12,  1870  ;  Section  4,  1836.] 

SECTION  479.  The  Commissioner  of  Patents  and  the  chief 
clerk,  before  entering  upon  their  duties,  shall  severally  give 
bond,  with  sureties,  to  the  Treasurer  of  the  United  States,  the 
former  in  the  sum  of  ten  thousand  dollars,  and  the  latter  in 
the  sum  of  five  thousand  dollars,  conditioned  for  the  faithful 
discharge  of  their  respective  duties,  and  that  they  shall  render 
to  the  proper  officers  of  the  Treasury  a  true  account  of  all 
money  received  by  virtue  of  their  offices.  [See  prior  patent 
statutes  :  Section  6,  1870  ;  Section  3,  1836.] 


602  THE    PATENT    STATUTES. 

SECTION  4SO.  All  officers  and  employes  of  the  Patent-Office 
shall  be  incapable,  during  the  period  for  which  they  hold  their 
appointments,  to  acquire  or  take,  directly  or  indirectly,  except 
by  inheritance  or  bequest,  any  right  or  interest  in  any  patent 
issued  by  the  Office.  [See  prior  patent  statutes  :  Section  16, 
1870.] 

SECTION  481.  The  Commissioner  of  Patents,  under  the 
direction  of  the  Secretary  of  the  Interior,  shall  superintend  or 
perform  all  duties  respecting  the  granting  and  issuing  of  pat- 
ents directed  by  law  ;  and  he  shall  have  charge  of  all  books, 
records,  papers,  models,  machines,  and  other  things  belonging 
to  the  Patent- Office.  [See  prior  patent  statutes  :  Section  7, 
1870  ;  Section  1,  1836.] 

SECTION  482.  The  examiners-in-chief  shall  be  persons  of 
competent  legal  knowledge  and  scientific  ability,  whose  duty 
it  shall  be,  on  the  written  petition  of  the  appellant,  to  revise 
and  determine  upon  the  validity  of  the  adverse  decisions  of 
t  examiners  upon  applications  for  patents,  and  for  re-issues  of 
patents,  and  in  interference  cases  ;  and,  when  required  by  the 
Commissioner,  they  shall  hear  and  report  upon  claims  for  ex- 
tensions, and  perform  such  other  like  duties  as  he  may  assign 
them.  [See  prior  patent  statutes  :  Section  10,  1870  ;  Section 
2,  1861.] 

SECTION  483.  The  Commissioner  of  Patents,  subject  to  the 
approval  of  the  Secretary  of  the  Interior,  may  from  time  to 
time  establish  regulations,  not  inconsistent  with  law,  for  the 
conduct  of  proceedings  in  the  Patent-Office.  [See  prior  pat- 
ent statutes  :  Section  19,  1870.] 

SECTION  484.  The  Commissioner  of  Patents  shall  cause  to 
be  classified  and  arranged  in  suitable  cases,  in  the  rooms  and 
galleries  provided  for  that  purpose,  the  models,  specimens  of 
composition,  fabrics,  manufactures,  works  of  art,  and  designs, 
which  have  been  or  shall  be  deposited  in  the  Patent-Office  ; 
and  the  rooms  and  galleries  shall  be  kept  open  during  suitable 
hours  for  public  inspection.  [See  prior  patent  statutes  :  Sec- 
tion 13,  1870  ;  Section  20,  1836.] 

SECTION  485.  The  Commissioner  of  Patents  may  restore  to 
the  respective  applicants  such  of  the  models  belonging  to 


THE    PATENT   STATUTES.  603 

rejected  applications  as  he  shall  not  think  necessary  to  be  pre- 
served, or  he  may  sell  or  otherwise  dispose  of  them  after  the 
application  has  been  finally  rejected  for  one  year,  paying  the 
proceeds  into  the  Treasury,  as  other  patent-moneys  are 
directed  to  be  paid.  [See  prior  patent  statutes  :  Section  14, 
1870  ;  Section  5,  1861.] 

SECTION  486.  There  shall  be  purchased  for  the  use  of  the 
Patent-Office  a  library  of  such  scientific  works  and  periodicals, 
both  foreign  and  American,  as  may  aid  the  officers  in  the  dis- 
charge of  their  duties,  not  exceeding  the  amount  annually  ap. 
propriated  for  that  purpose.  [See  prior  patent  statute  :  Sec- 
tion 15,  1870.] 

SECTION  487.  For  gross  misconduct  the  Commissioner  of 
Patents  may  refuse  to  recognize  any  person  as  a  patent-agent, 
either  generally  or  in  any  particular  case  ;  but  the  reasons  for 
such  refusal  shall  be  duly  recorded,  and  be  subject  to  the  ap- 
proval of  the  Secretary  of  the  Interior.  [See  prior  patent 
statute  :  Section  17,  1870.] 

SECTION  488.  The  Commissioner  of  Patents  may  require  all 
papers  filed  in  the  Patent-Office,  if  not  correctly,  legibly,  and 
clearly  written,  to  be  printed  at  the  cost  of  the  party  filing 
them.  [See  prior  patent  statutes  :  Section  18,  1870  ;  Section 
8,  1861.] 

SECTION  489.  The  Commissioner  of  Patents  may  print,  or 
cause  to  be  printed,  copies  of  the  claims  of  current  issues,  and 
copies  of  such  laws,  decisions,  regulations,  and  circulars  as 
may  be  necessary  for  the  information  of  the  public.  [See 
prior  patent  statute  :  Section  20,  1870.] 

SECTION  490.  The  Commissioner  of  Patents  is  authorized  to 
have  printed,  from  time  to  time,  for  gratuitous  distribution, 
not  to  exceed  one  hundred  and  fifty  copies  of  the  complete 
specifications  and  drawings  of  each  patent  hereafter  issued, 
together  with  suitable  indexes,  one  copy  to  be  placed  for  free 
public  inspection  in  each  capitol  of  every  State  and  Territory, 
one  for  the  like  purpose  in  the  clerk's  office  of  the  district 
court  of  each  judicial  district  of  the  United  States,  except 
when  such  offices  are  located  in  State  or  territorial  capitols, 
and  one  in  the  Library  of  Congress,  which  copies  shall  be  cer- 


604  THE    PATENT    STATUTES. 

tified  under  the  hand  of  the  Commissioner  and  seal  of  the 
Patent-Office,  and  shall  not  be  taken  from  the  depositories  for 
any  other  purpose  than  to  be  used  as  evidence.  [See  Joint 
Resolution  No.  5,  January  11,  1871,  16  Statutes  at  Large, 
590.] 

SECTION  491.  The  Commissioner  of  Patents  is  authorized  to 
have  printed  such  additional  numbers  of  copies  of  specifica- 
tions and  drawings,  certified  as  provided  in  the  preceding  sec- 
tion, at  a  price  not  to  exceed  the  contract  price  for  such  draw- 
ings, for  sale,  as  may  be  warranted  by  the  actual  demand  for 
the  same  ;  and  he  is  also  authorized  to  furnish  a  complete  set 
of  such  specifications  and  drawings  to  any  public  library  which 
•will  pay  for  binding  the  same  into  volumes  to  correspond  with 
those  in  the  Patent-Office,  and  for  the  transportation  of  the 
same,  and  which  shall  also  provide  for  proper  custody  for  the 
same,  with  convenient  access  for  the  public  thereto,  under 
such  regulations  as  the  Commissioner  shall  deem  reasonable. 
[See  Joint  Resolution  No.  5,  January  11,  1871,  16  Statutes  at 
Large,  590.] 

SECTION  492.  The  lithographing  and  engraving  required  by 
the  two  preceding  sections  shall  be  awarded  to  the  lowest  and 
best  bidders  for  the  interests  of  the  Government,  due  regard 
being  paid  to  the  execution  of  the  work,  after  due  advertising 
by  the  Congressional  Printer,  under  the  direction  of  the  Joint 
Committee  on  Printing  ;  but  the  Joint  Committee  on  Printing 
may  empower  the  Congressional  Printer  to  make  immediate 
contracts  for  engraving,  whenever,  in  their  opinion,  the 
exigencies  of  the  public  service  will  not  justify  waiting  for  ad- 
vertisement and  award  ;  or  if,  in  the  judgment  of  the  Joint 
Committee  on  Printing,  the  work  can  be  performed  under  the 
direction  of  the  Commissioner  of  Patents  more  advantageously 
than  in  the  manner  above  prescribed,  it  shall  be  so  done,  under 
such  limitations  and  conditions  as  the  Joint  Committee  on 
Printing  may  from  time  to  time  prescribe.  [See  Joint  Reso- 
lution No.  5,  January  11,  1871,  16  Statutes  at  Large,  590, 
and  Section  1  of  Patent  Act  of  March  24,  1871.] 

SECTION  493.  The  price  to  be  paid  for  uncertified  printed 
copies  of  specifications  and  drawings  of  patents  shall  be  deter- 


THE    PATENT    STATUTES.  605 

mined  by  the  Commissioner  of  Patents,  within  the  limits  of 
ten  cents  as  the  minimum  and  fifty  cents  as  the  maximum 
price.  [See  prior  patent  statute  :  Section  1,  March  24,  1871.] 

SECTION  494.  The  Commissioner  of  Patents  shall  lay  before 
Congress,  in  the  month  of  January,  annually,  a  report,  giving 
a  detailed  statement  of  all  moneys  received  for  patents,  for 
copies  of  records  or  drawings,  or  from  any  other  source  what- 
ever ;  a  detailed  statement  of  all  expenditures  for  contingent 
and  miscellaneous  expenses  ;  a  list  of  all  patents  which  were 
granted  during  the  preceding  year,  designating  under  proper 
heads  the  subjects  of  such  patents  ;  an  alphabetical  list  of  all  the 
patentees,  with  their  places  of  residence  ;  a  list  of  all  patents 
which  have  been  extended  during  the  year  ;  and  such  other 
information  of  the  condition  of  the  Patent-Office  as  may  be 
useful  to  Congress  or  the  public.  [See  prior  patent  statutes  : 
Section  9,  1870  ;  Section  14,  1837  ;  Section  1,  July  3,  1832.] 

SECTION  496.  All  disbursements  for  the  Patent-Office  shall 
be  made  by  the  disbursing  clerk  of  the  Interior  Department. 
[See  prior  patent  statutes  :  Section  69,  1870  ;  Section  14, 
1837.] 

SECTION  629.  The  circuit  courts  shall  have  original  jurisdic- 
tion, as  follows  :  *  *  * 

Ninth.  Of  all  suits  at  law  or  in  equity  arising  under  the 
patent  or  copyright  laws  of  the  United  States.  [See  prior 
patent  statutes  :  Section  55,  1870  ;  Section  14,  1836  ;  Section 
1,  1819.] 

SECTION  699.  A  writ  of  error  may  be  allowed  to  review  any 
final  judgment  at  law,  and  an  appeal  shall  be  allowed  from 
any  final  decree  in  equity  hereinafter  mentioned,  without  re- 
gard to  the  sum  or  value  in  dispute  : 

First.  Any  final  judgment  at  law  or  final  decree  in  equity 
of  any  circuit  court,  or  of  any.  district  court  acting  as  a  circuit 
court,  or  of  the  Supreme  Court  of  the  District  of  Columbia, 
or  of  any  Territory,  in  any  case  touching  patent-rights  or 
copyrights.  [See  prior  patent  statutes  :  Section  56,  1870  ; 
Section  1,  February  18,  18G1  ;  Section  16,  1836  ;  Section  1, 
1819.] 

SECTION   892.  Written  or   printed   copies  of  any  records, 


606  THE   PATENT   STATUTES. 

books,  papers,  or  drawings  belonging  to  the  Patent-Office, 
and  of  letters-patent  authenticated  by  the  seal  and  certified  by 
the  Commissioner  or  Acting  Commissioner  thereof,  shall  be 
evidence  in  all  cases  wherein  the  originals  could  be  evidence  5 
and  any  person  making  application  therefor,  and  paying  the 
fee  required  by  law,  shall  have  certified  copies  thereof.  [See 
prior  patent  statutes  :  Section  57,- 1870  ;  Section  15,  March  2, 
1861  ;  Section  2,  1837  ;  Section  4,  1836  ;  Sections  3,  6,  1790.] 

SECTION  893.  Copies  of  the  specifications  and  drawings  of 
foreign  letters-patent,  certified  as  provided  in  the  pr: ceding 
section,  shall  be  prima-facie  evidence  of  the  fact  of  the 
granting  of  such  letters-patent,  and  of  the  date  and  contents 
thereof.  [See  prior  patent  statute  :  Section  57,  1870.] 

SECTION  894.  The  printed  copies  of  specifications  and 
drawings  of  patents,  which  the  Commissioner  of  Patents  is 
authorized  to  print  for  gratuitous  distribution,  and  to  deposit 
in  the  capitols  of  the  States  and  Territories,  and  in  the  clerk's 
offices  of  the  district  courts,  shall,  when  certified  by  him  and 
authenticated  by  the  seal  of  his  office,  be  received  in  all  courts 
as  evidence  of  all  matters  therein  contained.  [See  Joint  Reso- 
lution No.  5,  January  11,  1871  ;  16  Statutes  at  Large,  590.] 

SECTION  973.  When  judgment  or  decree  is  rendered  for  the 
plaintiff  or  complainant,  in  any  suit  at  law  or  in  equity,  for 
the  infringement  of  a  part  of  a  patent,  in  which  it  appears  that 
the  patentee,  in  his  specification,  claimed  to  be  the  original 
and  first  inventor  or  discoverer  of  any  material  or  substantial 
part  of  the  thing  patented,  of  which  he  was  not  the  original 
and  first  inventor,  no  costs  shall  be  recovered,  unless  the 
proper  disclaimer,  as  provided  by  the  patent-laws,  has  been 
entered  at  the  Patent-Office  before  the  suit  was  brought. 
[See  Revised  Statutes,  Section  4922  ;  and  prior  patent  stat- 
utes :  Section  60,  1870  ;  Section  9,  1837  ;. Section  15,  1836.] 

SECTION  4883.  All  patents  shall  be  issued  in  the  name  of 
the  United  States  of  America,  under  the  seal  of  the  Patent 
Office,  and  shall  be  signed  by  the  Secretary  of  the  Interior  and 
countersigned  by  the  Commissioner  of  Patents,  and  they  shall 
be  recorded,  together  with  the  specifications,  in  the  Patent 
Office,  in  books  to  be  kept  for  that  purpose.  [See  prior  pat- 


THE    PATENT    STATUTES.  607 

ent  statutes  :  Section  21,  1870  ;  Section  5,  1836  ;  Section  1, 
1793  ;  Section  <,  1790.] 

SECTION  4884.  Every  patent  shall  contain  a  short  title  or 
description  of  the  invention  or  discovery,  correctly  indicating 
its  nature  and  design,  and  a  grant  to  the  patentee,  his  heirs  or 
assigns,  for  the  term  of  seventeen  years,  of  the  exclusive  right 
to  make,  use,  and  vend  the  invention  or  discovery  throughout 
the  United  States,  and  the  Territories  thereof,  referring  to  the 
specification  for  the  particulars  thereof.  A  copy  of  the 
specification  and  drawings  shall  be  annexed  to  the  patent  and 
be  a  part  thereof.  [See  prior  patent  statutes  :  Section  22, 
1870  ;  Section  16,  1861  ;  Section  5,  1836  ;  Section  1,  1793  ; 
Section  1,  1790.] 

.  SECTION  4885.  Every  patent  shall  bear  date  as  of  a  day  not 
later  than  six  months  from  the  time  at  which  it  was  passed  and 
allowed  and  notice  thereof  was  sent  to  the  applicant  or  his 
agent ;  and  if  the  final  fee  is  not  paid  within  that  period  the 
patent  shall  be  withheld.  [See  prior  patent  statutes  :  Section 
23,  1870  ;  Section  3,  1863  ;  Section  8,  1836.] 

SECTION  4886.  Any  person  who  has  invented  or  discovered 
any  new  and  useful  art,  machine,  manufacture  or  composition 
of  matter,  or  any  new  and  useful  improvement  thereof,  not 
known  or  used  by  others  in  this  country,  and  not  patented  or 
described  in  any  printed  publication  in  this  or  any  foreign 
country,  before  his  invention  or  discovery  thereof,  and  not  in 
public  use  or  on  sale  for  more  than  two  years  prior  to  his  ap- 
plication, unless  the  same  is  proved  to  have  been  abandoned, 
may,  upon  payment  of  the  fees  required  by  law,  and  other 
due  proceedings  had,  obtain  a  patent  therefor.  [See  prior 
patent  statutes  :  Section  24,  1870  ;  Sections  6  and  7,  1836  ; 
Section  1,  1800  ;  Section  1.  1793.] 

SECTION  4887.  No  person  shall  be  debarred  from  receiving 
a  patent  for  his  invention  or  discovery,  nor  shall  any  patent 
be  declared  invalid,  by  reason  of  its  having  been  first  patented 
or  caused  to  be  patented  in  a  foreign  country,  unless  the  same 
has  been  introduced  into  public  use  in  the  United  States  for  more 
than  two  years  prior  to  the  application.  But  every  patent  grant- 
ed for  an  invention  which  has  been  previously  patented  in  a 


608  THE    PATENT    STATUTES. 

foreign  country  shall  be  so  limited  as  to  expire  at  the  same  time 
with  the  foreign  patent,  or,  if  there  be  more  than  one,  at  the 
same  time  with  the  one  having  the  shortest  term,  and  in  no  case 
shall  it  be  in  force  more  than  seventeen  years.  [See  prior 
patent  statutes  :  Section  25,  1870  ;  Section  6,  1839  ;  Section 
8,  1836.] 

SECTION  4888.  Before  any  inventor  or  discoverer  shall  re- 
ceive a  patent  for  his  invention  or  discovery,  he  shall  make 
application  therefor,  in  writing,  to  the  Commissioner  of  Pat- 
ents, and  shall  file  in  the  Patent-Office  a  written  description 
of  the  same,  and  of  the  manner  and  process  of  making,  con- 
structing, compounding,  and  using  it,  in  such  full,  clear,  con- 
cise, and  exact  terms  as  to  enable  any  person  skilled  in  the  art 
or  science  to  which  it  appertains,  or  with  which  it  is  most 
nearly  connected,  to  make,  construct,,  compound  and  use. the 
same  ;  and  in  case  of  a  machine,  he  shall  explain  the  principle 
thereof,  and  the  best  mode  in  which  he  has  contemplated  ap- 
plying that  principle,  so  as  to  distinguish  it  from  other  inven- 
tions ;  and  he  shall  particularly  point  out  and  distinctly  claim, 
the  part,  improvement,  or  combination  which  he  claims  as  his 
invention  or  discovery.  The  specification  and  claim  shall  be 
signed  by  the  inventor  and  attested  by  two  witnesses.  [See 
prior  patent  statutes  :  Section  26,  1870  ;  Section  6,  1836  ; 
Section  1,  1793  ;  Section  2,  1790.] 

SECTION  4889.  When  the  nature  of  the  case  admits  of  draw- 
ings, the  applicant  shall  furnish  one  copy,  signed  by  the  in- 
ventor or  his  attorney  in  fact,  and  attested  by  two  witnesses, 
which  shall  be  filed  in  the  Patent-Office,  and  a  copy  of  the 
drawing,  to  be  furnished  by  the  Patent-Office,  shall  be  at- 
tached to  the  patent  as  a  part  of  the  specification.  [See  prior 
patent  statutes  :  Section  27,  1870  ;  Section  6,  1837 ;  Section 
6,  1836  ;  Section  3,  1793.] 

SECTION  4890.  "When  the  invention  or  discovery  is  of  a  com- 
position of  matter,  the  applicant,  if  required  by  the  Commis- 
sioner, shall  furnish  specimens  of  ingredients  and  of  the  com- 
position, sufficient  in  quantity  for  the  purpose  of  experiment. 
[See  prior  patent  statutes  :  Section  28, 1870  ;  Section  6,  1836  ; 
Section  3,  1793.] 


THE    PATENT   STATUTES.  609 

SECTION  4891.  In  all  cases  which  admit  of  representation  by 
model,  the  applicant,  if  required  by  the  Commissioner,  shall 
furnish  a  model  of  convenient  size  to  exhibit  advantageously 
the  several  parts  of  his  invention  or  discovery.  [See  prior 
patent  statutes  :  Section  29,  1870  ;  Section  6,  1836  ;  Section  3, 
1703  ;  Section  2,  1790.] 

SECTION  4892.  The  applicant  shall  make  oath  that  he  does 
verily  believe  himself  to  be  the  original  and  first  inventor  or 
discoverer  of  the  art,  machine,  manufacture,  composition,  or 
improvement  for  which  he  solicits  a  patent  ;  that  he  does  not 
know  and  does  not  believe  that  the  same  was  ever  before 
known  or  used  ;  and  shall  state  of  what  country  he  is  a  citi- 
zen. Such  oath  may  be  made  before  any  person  within  the 
United  States  authorized  by  law  to  administer  oaths,  or  when 
the  applicant  resides  in  a  foreign  country,  before  any  minister, 
charge  (Taffaires,  consul,  or  commercial  agent,  holding  com- 
mission under  the  Government  of  the  United  States,  or  before 
any  notary  public  of  the  foreign  country  in  which  the  appli- 
cant may  be.  [See  prior  patent  statutes  :  Section  30,  1870  ; 
Section  4,  1842  ;  Section  6,  1836  ;  Section  3,  1793.] 

SECTION  4893.  On  the  filing  of  any  such  application  and  the 
payment  of  the  fees  required  by  law,  the  Commissioner  of 
Patents  shall  cause  an  examination  to  be  made  of  the  alleged 
new  invention  or  discovery  ;  and  if  on  such  examination  it 
shall  appear  that  the  claimant  is  justly  entitled  to  a  patent 
under  the  law,  and  that  the  same  is  sufficiently  useful  and  im- 
portant, the  Commissioner  shall  issue  a  patent  therefor.  [See 
prior  patent  statutes  :  Section  31,  1870  ;  Section.  7,  1836  ; 
Section  1,  1790.] 

SECTION  4894.  All  applications  for  patents  shall  be  com- 
pleted and  prepared  for  examination  within  two  years  after 
the  filing  of  the  application^  and  in  default  thereof,  or  upon 
failure  of  the  applicant  to  prosecute  the  same  within  two  years 
after  any  action  therein,  of  which  notice  shall  have  been  given 
to  the  applicant,  they  shall  be  regarded  as  abandoned  by  the 
parties  thereto,  unless  it  be  shown  to  the  satisfaction  of  the 
Commissioner  of  Patents  that  such  delay  was  unavoidable. 
[See  prior  patent  statutes:  Section  32,  1870  ;  Section  12,  1861.] 


610  THE    PATENT    STATUTES. 

SECTION  4895.  Patents  may  be  granted  and  issued  or  re- 
issued to  the  assignee  of  the  inventor  or  discoverer  ;  but  the 
assignment  must  first  be  entered  of  record  in  the  Patent- 
Office.  And  in  all  cases  of  an  application  by  an  assignee  for 
the  issue  of  a  patent,  the  application  shall  be  made  and  the 
specification  sworn  to  by  the  inventor  or  discoverer  ;  and  in 
all  cases  of  an  application  for  a  re-issue  of  any  patent,  the 
application  must  be  made  and  the  corrected  specification  signed 
by  the  inventor  or  discoverer,  if  he  is  living,  unless  the  patent 
was  issued  and  the  assignment  made  before  the  eighth  day  of 
July,  eighteen  hundred  and  seventy.  [See  prior  patent  stat- 
utes :  Section  33,  1870  ;  Section  6,  1837.] 

SECTION  4896.  "When  any  person,  having  made  any  new  in- 
vention or  discovery  for  which  a  patent  might  have  been 
granted,  dies  before  a  patent  is  granted,  the  right  of  applying 
for  and  obtaining  the  patent  shall  devolve  on  his  executor  or 
administrator,  in  trust  for  the  heirs  at  law  of  the  deceased,  in 
case  he  shall  have  died  intestate  ;  or  if  he  shall  have  left  a 
will,  disposing  of  the  same,  then  in  trust  for  his  devisees,  in 
as  full  manner  and  on  the  same  terms  and  conditions  as  the 
same  might  have  been  claimed  or  enjoyed  by  him  in  his  life 
time  ;  and  when  the  application  is  ntade  by  such  legal  repre- 
sentatives, the  oath  or  affirmation  required  to  be  made  shall  be 
so  varied  in  form  that  it  can  be  made  by  them.  [See  prior 
patent  statutes  :  Section  34,  1870  ;  Section  10,  1836  ;  Sec- 
tion 2,  1800.] 

SECTION  4897.  Any  person  who  has  an  interest  in  an  inven- 
tion or  discovery,  whether  as  inventor,  discoverer,  or  assignee, 
for  which  a  patent  was  ordered  to  issue  upon  the  payment  of 
the  final  fee,  but  who  fails  to  make  payment  thereof  within 
six  months  from  the  time  at  which  it  was  passed  and  allowed, 
and  notice  thereof  was  sent  to  the  applicant  or  his  agent,  shall 
have  a  right  to  make  an  application  for  a  patent  for  such  in- 
vention or  discovery  the  same  as  in  the  case  of  an  original  ap- 
plication. But  such  second  application  must  be  made  within 
two  years  after  the  allowance  of  the  original  application.  But 
no  person  shall  be  held  responsible  in  damages  for  the  manu- 
facture or  use  of  any  article  or  thing  for  which  a  patent  was 


THE   PATENT   STATUTES.  611 

ordered  to  issue  under  such  renewed  application  prior  to  the 
issue  of  the  patent.  And  upon  the  hearing  of  renewed  appli- 
cations preferred  under  this  section,  abandonment  shall  be 
considered  as  a  question  of  fact.  [See  prior  patent  statutes  : 
Section  35,  1870  ;  Section  1,  1865  ;  Section  1,  1864.] 

SECTION  4898.  Every  patent  or  any  interest  therein  shall  be 
assignable  in  law,  by  an  instrument  in  writing  ;  and  the  pat- 
entee or  his  assigns  or  legal  representatives  may,  in  like  man- 
ner, grant  and  convey  an  exclusive  right  under  his  patent  to 
the  whole  or  any  specified  part  of  the  United  States.  An 
assignment,  grant,  or  conveyance  shall  be  void  as  against  any 
subsequent  purchaser  or  mortgagee  for  a  valuable  considera- 
tion, without  notice,  unless  it  is  recorded  in  the  Patent-Office 
within  three  months  from  the  date  thereof.  [See  prior  patent 
statutes  :  Section  36,  1870  ;  Section  11,  1836  ;  Section  4, 
1793.] 

SECTION  4899.  Every  person  who  purchases  of  the  inventor 
or  discoverer,  or  with  his  knowledge  and  consent  constructs 
any  newly  invented  or  discovered  machine,  or  other  patentable 
article,  prior  to  the  application  by  the  inventor  or  discoverer 
for  a  patent,  or  who  sells  or  uses  one  so  constructed,  shall 
have  the  right  to  use,  and  vend  to  others  to  be  used,  the 
specific  thing  so  made  or  purchased,  without  liability  there- 
for. [See  prior  patent  statutes  :  Section  37,  1870  ;  Section 
7,  1839.] 

SECTION  4900.  It  shall  be  the  duty  of  all  patentees,  and 
their  assigns  and  legal  representatives,  and  of  all  persons  mak- 
ing or  vending  any  patented  article  for  or  under  them,  to  giro 
sufficient  notice  to  the  public  that  the  same  is  patented  ;  either 
by  fixing  thereon  the  word  "  patented,"  together  with  the  day 
and  year  the  patent  was  granted  ;  or  when,  from  the  character 
of  the  article,  this  cannot'  be  done,  by  fixing  to  it,  or  to  tho 
package  wherein  one  or  more  of  them  is  inclosed,  a  label  con- 
taining the  like  notice  ;  and  in  any  suit  for  infringement,  by 
the  party  failing  so  to  mark,  no  damages  shall  be  recovered  by 
the  plaintiff,  except  on  proof  that  the  defendant  was  duly 
notified  of  the  infringement,  and  continued,  after  such  notice, 
to  make,  use,  or  vend  the  article  so  patented.  [See  prior 


612  THE    PATENT    STATUTES. 

patent  statutes  :  Section  38,  18TO  ;  Section  13,  1861  ;  Section 
6,  1842.] 

SECTION  4901.  Every  person  who,  in  any  manner,  marks 
upon  anything  made,  used,  or  sold  by  him  for  which  he  has 
not  obtained  a  patent,  the  name  or  any  imitation  of  the  name 
of  any  person  who  has  obtained  a  patent  therefor  without  the 
consent  of  such  patentee,  or  his  assigns  or  legal  representa- 
tives ;  or 

Who,  in  any  manner,  marks  upon  or  affixes  to  any  such 
patented  article  the  word  "patent"  or  "patentee,"  or  the 
words  "  letters-patent,"  or  any  word  of  like  import,  with  in- 
tent to  imitate  or  counterfeit  the  mark  or  device  of  the  pat- 
entee, without  having  the  license  or  consent  of  such  patentee 
or  his  assigns  or  legal  representatives  ;  or 

Who,  in  any  manner,  marks  upon  or  affixes  to  any  un pat- 
ented article  the  word  "  patent,"  or  any  word  importing  that 
the  same  is  patented,  for  the  purpose  of  deceiving  the  public, 
shall  be  liable,  for  every  such  offence,  to  a  penalty  of  not  less 
than  one  hundred  dollars,  with  costs  ;  one  half  of  said  penalty 
to  the  person  who  shall  sue  for  the  same,  and  the  other  to  the 
use  of  the  United  States,  to  be  recovered  by  suit  in  any  dis- 
trict court  of  the  United  States,  within  whose  jurisdiction  such 
offence  may  have  been  committed.  [See  prior  patent  stat- 
utes :  Section  39,  1870  ;  Section  5,  1842.] 

SECTION  4902.  Any  citizen  of  the  United  States  who  makes 
any  new  invention  or  discovery,  and  desires  further  time  to 
mature  the  same,  may,  on  payment  of  the  fees  required  by 
law,  file  in  the  Patent-Office  a  caveat  setting  forth  the  design 
thereof,  and  of  its  distinguishing  characteristics,  and  praying 
protection  of  his  right  until  he  shall  have  matured  his  inven- 
tion. Such  caveat  shall  be  filed  in  the  confidential  archives  of 
the  office  and  preserved  in  secrecy,  and  shall  be  operative  for 
the  term  of  one  year  from  the  filing  thereof  ;  and  if  applica- 
tion is  made  within  the  year  by  any  other  person  for  a  patent 
with  which  such  caveat  would  in  any  manner  interfere,  the 
Commissioner  shall  deposit  the  description,  specification, 
drawings,  and  model  of  such  application  in  like  manner  in  the 
confidential  archives  of  the  office,  and  give  notice  thereof,  by 


THE    PATENT   STATUTES.  613 

mail,  to  the  person  by  \vliom  the  caveat  was  filed.  If  such 
person  desires  to  avail  himself  of  his  caveat,  he  shall  file  his 
description,  specifications,  drawings,  and  model  within  three 
months  from  the  time  of  placing  the  notice  in  the  post-oflice 
in  Washington,  with  the  usual  time  required  for  transmitting 
it  to  the  caveator  added  thereto  ;  which  time  shall  be  indorsed 
on  the  notice.  An  alien  shall  have  the  privilege  herein 
granted,  if  he  has  resided  in  the  United  States  one  year  next 
preceding  the  filing  of  his  caveat,  and  has  made  oath  of  his 
intention  to  become  a  citizen.  [See  prior  patent  statutes  : 
Section  40,  1870  ;  Section  9,  1861  ;  Section  12,  1836.] 

SECTION  4903.  Whenever,  on  examination,  any  claim  for  a 
patent  is  rejected,  the  Commissioner  shall  notify  the  applicant 
thereof,  giving  him  briefly  the  reasons  for  such  rejection,  to- 
gether with  such  information  and  references  as  may  be  useful 
in  judging  of  the  propriety  of  renewing  his  application  or  of 
altering  his  specification  ;  and  if,  after  receiving  such  notice, 
the  applicant  persists  in  his  claim  for  a  patent,  with  or  without 
altering  his  specifications,  the  Commissioner  shall  order  a  re- 
examination  of  the  case.  [See  prior  patent  statutes  :  Section 
41,  1870  ;  Section  7,  1836.] 

SECTION  4904.  Whenever  an  application  is  made  for  a  patent 
which,  in  the  opinion  of  the  Commissioner,  would  interfere 
with  any  pending  application,  or  with  any  unexpired  patent, 
he  shall  give  notice  thereof  to  the  applicants,  or  applicant  and 
patentee,  as  the  case  may  be,  and  shall  direct  the  primary  ex- 
aminer to  proceed  to  determine  the  question  of  priority  of 
invention.  And  the  Commissioner  may  issue  a  patent  to  the 
party  who  is  adjudged  the  prior  inventor,  unless  the  adverse 
party  appeals  from  the  decision  of  the  primary  examiner,  or  of 
the  board  of  examiners-in-chief,  as  the  case  may  be,  within 
such  time,  not  less  than  twenty  days,  as  the  Commissioner 
shall  prescribe.  [See  prior  patent  statutes  :  Section  42,  1870  ; 
Section  8,  1836  ;  Section  9,  1793.] 

SECTION  4905.  The  Commissioner  of  Patents  may  establish 
rules  for  taking  affidavits  and  depositions  required  in  cases 
pending  in  the  Patent-Office,  and  such  affidavits  and  deposi- 
tions may  be  taken  before  any  officer  authorized  by  law  to  take 


614  THE    PATENT    STATUTES. 

depositions  to  be  used  in  the  courts  of  the  United  States,  or  of 
the  State  where  the  officer  resides.  [Se"e  prior  patent  statutes  : 
Section  43,  1870  ;  Section  1,  March  3,  1861  ;  Section  12, 
1839.] 

SECTION  4906.  The  clerk  of  any  court  of  the  United  States, 
for  any  district  or  Territory  wherein  testimony  is  to  be  taken 
for  use  in  any  contested  case  pending  in  the  Patent-Office, 
shall,  upon  the  appli cation  of  any  party  thereto,  or  of  his 
agent  or  attorney,  issue  a  subpoena  for  any  witness  residing  or 
being  within  sucli  district  or  Territory,  commanding  him  to 
appear  and  testify  before  any  officer  in  such  district  or  Terri- 
tory authorized  to  take  depositions  and  affidavits,  at  any  time 
and  place  in  the  subpoena  stated.  But  no  witness  shall  be 
required  to  attend  at  any  place  more  than  forty  miles  from 
the  place  where  the  subpoena  is  served  upon  him.  [See  prior 
patent  statutes  :  Section  44,  1870  ;  Section  1,  1861.] 

SECTION  4907.  Every  witness  duly  subpoenaed  and  in  attend- 
ance shall  be  allowed  the  same  fees  as  are  allowed  to  witnesses 
attending  the  courts  of  the  United  States.  [See  prior  patent 
statutes  :  Section  45,  1870  ;  Section  1,  1861.] 

SECTION  4908.  Whenever  any  witness,  after  being  duly 
served  with  such  subpoena,  neglects  or  refuses  ^to  appear,  or 
after  appearing  refuses  to  testify,  the  judge  of  the  court  whose 
clerk  issued  the  subpoena  may,  on  proof  of  such  neglect  or 
refusal,  enforce  obedience  to  the  process,  or  punish  the  dis- 
obedience, as  in  other  like  cases.  But  no  witness  shall  be 
deemed  guilty  of  contempt  for  disobeying  such  subpoena,  un- 
less his  fees  and  travelling  expenses  in  going  to,  returning 
from,  and  one  day's  attendance  at  the  place  of  examination, 
are  paid  or  tendered  him  at  the  time  of  the  service  of  the 
subpoena  ;  nor  for  refusing  to  disclose  any  secret  invention  or 
discovery  made  or  owned  by  himself.  [See  prior  patent  stat- 
utes :  Sections  44  and  45,  1870  ;  Section  1,  1861.] 

SECTION  4909.  Every  applicant  for  a  patent  or  for  the  re- 
issue of  a  patent,  any  of  the  claims  of  which  have  been  twice 
rejected,  and  every  party  to  an  interference,  may  appeal  from 
the  decision  of  the  primary  examiner,  or  of  the  examiner  in 
charge  of  interferences  in  such  case,  to  the  board  of  examiners- 


THE   PATENT   STATUTES.  615 

in-chief  ;   having  once  paid  the  fee  for  such  appeal.     [See 
prior  patent  statutes  :  Section  46,  18TO  ;  Section  1,  1866.] 

SECTION  4910.  If  such  party  is  dissatisfied  with  the  decision 
of  the  examiners-in  chief,  he  may,  on  payment  of  the  fee  pre- 
scribed, appeal  to  the  Commissioner  in  person.  [See  prior 
patent  statutes  :  Section  47,  1870  ;  Section  2,  1861.] 

SECTION  4911.  If  such  party,  except  a  party  to  an  interfer- 
ence, is  dissatisfied  with  the  decision  of  the  Commissioner,  he 
may  appeal  to  the  Supreme  Court  of  the  District  of  Columbia, 
sitting  in  bane.  [See  prior  patent  statutes  :  Section  48, 1870  ; 
Section  1,  1852  ;  Section  11,  1839.] 

SECTION  4912.  When  an  appeal  is  taken  to  the  Supreme 
Court  of  the  District  of  Columbia,  the  appellant  shall  give 
notice  thereof  to  the  Commissioner,  and  file  in  the  Patent- 
Office,  within  such  time  as  the  Commissioner  shall  appoint, 
his  reasons  of  appeal,  specifically  set  forth  in  writing.  [See 
prior  patent  statute  :  Section  49,  1870.] 

SECTION  4913.  The  court  shall,  before  hearing  such  appeal, 
give  notice  to  the  Commissioner  of  the  time  and  place  of  the 
hearing,  and  on  receiving  such  notice  the  Commissioner  shall 
give  notice  of  such  time  and  place  in  such  manner  as  the  court 
may  prescribe,  to  all  parties  who  appear  to  be  interested 
therein.  The  party  appealing  shall  lay  before  the  court  certi- 
fied copies  of  all  the  original  papers  and  evidence  in  the  case, 
and  the  Commissioner  shall  furnish  the  court  with  the  grounds 
of  his  decision,  fully  set  forth  in  writing,  touching  all  the 
points  involved  by  the  reasons  of  appeal.  And  at  the  request 
of  any  party  interested,  or  of  the  court,  the  Commissioner  and 
the  examiners  may  be  examined  under  oath,  in  explanation  of 
the  principles  of  the  thing  for  which  a  patent  is  demanded. 
[See  prior  patent  statute  :  Section  51,  1870.] 

SECTION  4914.  The  court,  on  petition,  shall  hear  and  deter- 
mine such  appeal,  and  revise  the  decision  appealed  from  in  a 
summary  way,  on  the  evidence  produced  before  the  Commis- 
sioner, at  such  early  and  convenient  time  as  the  court  may  ap- 
point ;  and  the  revision  shall  be  confined  to  the  points  set 
forth  in  the  reasons  of  appeal.  After  hearing  the  case  the 
court  shall  return  to  the  Commissioner  a  certificate  of  its  pro- 


616  THE   PATENT   STATUTES. 

ceedings  and  decision,  which  shall  be  entered  of  record  in  the 
Patent-Office,  and  shall  govern  the  further  proceedings  in  the 
case.  But  no  opinion  or  decision  of  the  court  in  any  such  case 
shall  preclude  any  person  interested  from  the  right  to  contest 
the  validity  of  such  patent  in  any  court  wherein  the  same  may 
be  called  in  question.  [See  prior  patent  statute  :  Section  50, 
1870;] 

SECTION  4915.  Whenever  a  patent  on  application  is  refused, 
either  by  the  Commissioner  of  Patents  or  by  the  Supreme 
Court  of  the  District  of  Columbia  upon  appeal  from  the  Com- 
missioner, the  applicant  may  have  remedy  by  bill  in  equity  ; 
and  the  court  having  cognizance 'thereof,  on  notice  to  adverse 
parties  and  other  due  proceedings  had,  may  adjudge  that  such 
applicant  is  entitled,  according  to  law,  to  receive  a  patent  for 
his  invention,  as  specified  in  his  claim,  or  for  any  part  there- 
of, as  the  facts  in  the  case  may  appear.  And  such  adjudica- 
tion, if  it  be  in  favor  of  the  right  of  the  applicant,  shall 
authorize  the  Commissioner  to  issue  such  patent  on  the  appli- 
cant filing  in  the  Patent-Office  a  copy  of  the  adjudication,  and 
otherwise  complying  with  the  requirements  of  law.  In  all 
cases,  where  there  is  no  opposing  party,  a  copy  of  the  bill 
shall  be  served  on  the  Commissioner  ;  and  all  the  expenses  of 
the  proceeding  shall  be  paid  by  the  applicant,  whether  the 
final  decision  is  in  his  favor  or  not.  [See  Revised  Statutes 
and  prior  patent  statutes  :  Section  52,  1870  ;  Section  10, 
1839.] 

SECTION  4916.  Whenever  any  patent  is  inoperative  or  in- 
valid, by  reason  of  a  defective  or  insufficient  specification,  or 
by  reason  of  the  patentee  claiming  as  his  own  invention  or  dis- 
covery more  than  he  had  a  right  to  claim  as  new,  if  the  error 
has  arisen  by  inadvertence,  accident,  or  mistake,  and  without 
any  fraudulent  or  deceptive  intention,  the  Commissioner  shall, 
on  the  surrender  of  such  patent  and  the  payment  of  the  duty 
required  by  law,  cause  a  new  patent  for  the  same  invention, 
and  in  accordance  with  the  corrected  specification,  to  be  issued 
to  the  patentee,  or,  in  the  case  of  his  death  or  of  an  assign- 
ment of  the  whole  or  any  undivided  part  of  the  original  pat- 
ent, then  to  his  executors,  administrators,  or  assigns,  for  the 


THE    PATENT    STATUTES.  617 

nnexpired  part  of  the  term  of  the  original  patent.  Such  sur- 
render shall  take  effect  upon  the  issue  of  the  amended  patent. 
The  Commissioner  may,  in  his  discretion,  cause  several  patents 
to  be  issued  for  distinct  and  separate  parts  of  the  thing  pat- 
ented, upon  demand  of  the  applicant,  and  upon  payment  of 
the  required  fee  for  a  re-issue  for  each  of  such  re-issued  let- 
ters-patent. The  specifications  and  claim  in  every  such  case 
shall  be  subject  to  revision  and  restriction  in-  the  same  manner 
as  original  applications  are.  Every  patent  so  re-issued,  to- 
gether with  the  corrected  specification,  shall  have  the  same 
effect  and  operation  in  law,  on  the  trial  of  all  actions  for  causes 
thereafter  arising,  as  if  the  same  had  been  originally  filed  in 
such  corrected  form  ;  but  no  new  matter  shall  be  introduced 
into  the  specification,  nor  in  case  of  a  machine-patent  shall  the 
model  or  drawings  be  amended,  except  each  by  the  other  ;  but 
when  there  is  neither  model  nor  drawing,  amendments  may  be 
made  upon  proof  satisfactory  to  the  Commissioner  that  such 
new  matter  or  amendment  was  a  part  of  the  original  inven- 
tion, and  was  omitted  from  the  specification  by  inadvertence, 
accident,  or  mistake,  as  aforesaid.  [See  prior  patent  statutes  : 
Section  53,  1870  ;  Sections  5  and  8,  1837  ;  Section  13,  1836  ; 
Section  3,  1832.] 

SECTION  4917.  Whenever,  through  inadvertence,  accident, 
or  mistake,  and  without  any  fraudulent  or  deceptive  intention, 
a  patentee  has  claimed  more  than  that  of  which  he  was  the 
original  or  first  inventor  or  discoverer,  his  patent  shall  be  valid 
for  all  that  part  which  is  truly  and  justly  his  own,  provided 
the  same  is  a  material  or  substantial  part  of  the  thing  pat- 
ented ;  and  any  such  patentee,  his  heirs  or  assigns,  whether 
of  the  whole  or  any  sectional  interest  therein,  may,  on  pay- 
ment of  the  fee  required  by  law,  make  disclaimer  of  such 
parts  of  the  thing  patented  as  he  shall  not  choose  to  claim  or 
to  hold  by  virtue  of  the  patent  or  assignment,  stating  therein 
the  extent  of  his  interest  in  such  patent.  Such  disclaimer 
shall  be  in  writing,  attested  by  one  or  more  witnesses,  and 
recorded  in  the  Patent-Office  ;  and  it  shall  thereafter  be  con- 
sidered as  part  of  the  original  specification  to  the  extent  of  the 
interest  possessed  by  the  claimant  and  by  those  claiming  under 


CIS  THE    PATENT    STATUTES. 

him  after  the  record  thereof.  But  no  such  disclaimer  shall 
affect  any  action  pending  at  the  time  of  its  being  filed,  except 
so  far  as  may  relate  to  the  question  of  unreasonable  neglect  or 
delay  in  filing  it.  [See  prior  patent  statutes  :  Section  54, 
1870  ;  Section  7,  1837.] 

SECTION  4918.  Whenever  there  are  interfering  patents,  any 
person  interested  in  any  one  of  them,  or  in  the  working  of  the 
invention  claimed  under  either  of  them,  may  have  relief 
against  the  interfering  patentee,  and  all  parties  interested 
under  him,  by  suit  in  equity  against  the  owners  of  the  inter- 
fering patent  ;  and  the  court,  on  notice  to  adverse  parties, 
and  other  due  proceedings  had  according  to  the  course  of 
equity,  may  adjudge  and  declare  either  of  the  patents  void  in 
whole  or  in  part,  or  inoperative,  or  invalid  in  any  particular 
part  of  the  United  States,  according  to  the  interest  of  the 
parties  in  the  patent  or  the  invention  patented.  But  no  such 
judgment  or  adjudication  shall  affect  the  right  of  any  person 
except  the  parties  to  the  suit  and  those  deriving  title  under 
them  subsequent  to  the  rendition  of  such  judgment.  [See 
prior  patent  statutes  :  Section  58,  1870  ;  Section  16,  1836.] 

SECTION  4919.  Damages  for  the  infringement  of  any  patent 
may  be  recovered  by  action  on  the  case,  in  the  name  of  the 
party  interested,  either  as  patentee,  assignee,  or  grantee.  And 
whenever  in  any  such  action  a  verdict  is  rendered  for  the 
plaintiff,  the  court  may  enter  judgment  thereon  for  any  sum 
above  the  amount  found  by  the  verdict  as  the  actual  damages 
sustained,  according  to  the  circumstances  of  the  case,  not  ex- 
ceeding three  times  the  amount  of  such  verdict,  together  with 
the  costs.  [See  prior  patent  statutes  :  Section  55,  1870  ;  Sec- 
tion 14,  1836  ;  Section  3,  1800  ;  Section  5,  1793  ;  Section  4, 
1790.] 

SECTION  4920.  In  any  action  for  infringement  the  defendant 
may  plead  the  general  issue,  and  having  given  notice  in  writ- 
ing to  the  plaintiff  or  his  attorney,  thirty  days  before,  may 
prove  on  trial  any  one  or  more  of  the  following  special  mat- 
ters : 

First.  That  for  the  purpose  of  deceiving  the  public  the  de- 
scription and  specification  filed  by  the  patentee,  in  the  Patent- 


THE   PATENT   STATUTES.  619 

Office  was  made  to  contain  less  than  the  whole  truth  relative 
to  his  invention  or  discovery,  or  more  than  is  necessary  to  pro- 
duce the  desired  effect ;  or, 

Second.  That  he  had  surreptitiously  or  unjustly  obtained 
the  patent  for  that  which  was  in  fact  invented  by  another, 
who  was  using  reasonable  diligence  in  adapting  and  perfecting 
the  same  ;  or, 

Third.  That  it  had  been  patented  or  described  in  some 
printed  publication  prior  to  his  supposed  invention  or  discov- 
ery thereof  ;  or, 

Fourth.  That  he  was  not  the  original  and  first  inventor  or 
discoverer  of  any  material  and  substantial  part  of  the  thing 
patented  ;  or, 

Fifth.  That  it  had  been  in  public  use  or  on  sale  in  this 
country  for  more  than  two  years  before  his  application  for  a 
patent,  or  had  been  abandoned  to  the  public. 

And  in  notices  as  to  proof  of  previous  invention,  knowledge, 
or  use  of  the  thing  patented,  the  defendant  shall  state  the 
names  of  patentees  and  the  dates  of  their  patents,  and  when 
granted,  and  the  names  and  residences  of  the  persons  alleged 
to  have  invented,  or  to  have  had  the  prior  knowledge  of  the 
thing  patented,  and  where  and  by  whom  it  had  been  used  ; 
and  if  any  one  or  more  of  the  special  matters  alleged  shall  be 
found  for  the  defendant,  judgment  shall  be  rendered  for  him 
with  costs.  And  the  like  defences  may  be  pleaded  in  any  suit 
in  equity  for  relief  against  an  alleged  infringement ;  and 
proofs  of  the  same  may  be  given  upon  like  notice  in  the  an- 
swer of  the  defendant,  and  with  the  like  effect.  [See  prior 
patent  statutes  :  Section  61,  1870  ;  Section  15,  1836  ;  Section 
6,  1793  ;  Section  6,  1790.] 

SECTION  4921.  The  several  courts  vested  with  jurisdiction  of 
cases  arising  under  the  patent  laws  shall  have  power  to  grant 
injunctions  according  to  the  course  and  principles  of  courts  of 
equity,  to  prevent  the  violation  of  any  right  secured  by  pat- 
ent, on  such  terms  as  the  court  may  deem  reasonable  ;  and 
upon  a  decree  being  rendered  in  any  such  case  for  an  infringe-- 
ment,  the  complainant  shall  be  entitled  to  recover,  in  addition 
to  the  profits  to  be  accounted  for  by  the  defendant,  the  dam- 


620  THE   PATENT   STATUTES. 

ages  the  complainant  has  sustained  thereby  ;  and  the  court 
shall  assess  the  same  or  cause  the  same  to  be  assessed  under  its 
direction.  And  the  court  shall  have  the  same  power  to  in- 
crease such  damages,  in  its  discretion,  as  is  given  to  increase 
the  damages  found  by  verdicts  in  actions  in  the  nature  of 
actions  of  trespass  upon  the  case.  [See  prior  patent  statutes  : 
Section  55,  1870  ;  Section  17,1836  ;  Section  1,  1819.] 

SECTION  4922.  Whenever,  through  inadvertence,  accident, 
or  mistake,  and  without  any  willful  default  or  intent  to  de- 
fraud or  mislead  the  public,  a  patentee  has,  in  his  specifica- 
tion, claimed  to  be  the  original  and  first  inventor  or  discoverer 
of  any  material  or  substantial  part  of  the  thing  patented,  of 
which  he  was  not  the  original  and  first  inventor  or  discoverer, 
every  such  patentee,  his  executors,  administrators,  and 
assigns,  whether  of  the  whole  or  any  sectional  interest  in  the 
patent,  may  maintain  a  suit  at  law  or  in  equity,  for  the  in- 
fringement of  any  part  thereof,  which  was  bona  fide  his  own, 
if  it  is  a  material  and  substantial  part  of  the  thing  patented, 
and  definitely  distinguishable  from  the  parts  claimed  without 
right,  notwithstanding  the  specifications  may  embrace  more 
than  that  of  which  the  patentee  was  the  first  inventor  or  dis- 
coverer. But  in  every  such  case  in  which  a  judgment  or  de- 
cree shall  be  rendered  for  the  plaintiff,  no  costs  shall  be  recov- 
ered unless  the  proper  disclaimer  has  been  entered  at  the 
Patent-Office  before  the  commencement  of  the  suit.  But  no 
patentee  shall  be  entitled  to  the  benefits  of  this  section  if  he 
has  unreasonably  neglected  or  delayed  to  enter  a  disclaimer. 
[See  prior  patent  statutes  :  Section  60,  1870  ;  Section  9, 1837.] 

SECTION  4923.  "Whenever  it  appears  that  a  patentee,  at  the 
time  of  making  his  application  for  the  patent,  believed  himself 
to  be  the  original  and  first  inventor  or  discoverer  of  the  thing 
patented,  the  same  shall  not  be  held  to  be  void  on  account  of 
the  invention  or  discovery,  or  any  part  thereof,  having  been 
known  or  used  in  a  foreign  country,  before  his  invention  or 
discovery  thereof,  if  it  had  not  been  patented  or  described  in 
a  printed  publication.  [See  prior  patent  statutes  :  Section  62, 
1870  ;  Section  15,  1836.] 

SECTION  4924.  Where  the  patentee  of  any  invention  or  dis- 


THE    PATENT    STATUTES.  621 

covery,  the  patent  for  which  was  granted  prior  to  the  second 
day  of  March,  eighteen  hundred  and  sixty-one,  sha!l  desire  an 
extension  of  this  patent  beyond  the  original  term  of  its  limita- 
tion, he  shall  make  application  therefor,  in  writing,  to  the 
Commissioner  of  Patents,  setting  forth  the  reasons  why  such 
extension  should  be  granted  ;  and  he  shall  also  furnish  a 
written  statement  under  oath  of  the  ascertained  value  of  the 
invention  or  discovery,  and  of  his  receipts  and  expenditures  on 
account  thereof,  sufficiently  in  detail  to  exhibit  a  true  and 
faithful  account  of  the  loss  and  profit  in  any  manner  accruing 
to  him  by  reason  of  the  invention  or  discovery.  Such  appli- 
cation shall  be  filed  not  more  than  six  months  nor  less  than 
ninety  days  before  the  expiration  of  the  original  term  of  the 
patent ;  and  no  extension  shall  be  granted  after  the  expiration  of 
the  original  term.  [See  prior  patent  statutes :  Section  63,  1870 ; 
Section  1,  1848  ;  Section  18,  1836  ;  Section  2,  July  3,  1832.] 

SECTION  4925.  Upon  the  receipt  of  such  application,  and 
the  payment  of  the  fees  required  by  law,  the  Commissioner 
shall  cause  to  be  published  in  one  newspaper  in  the  city  of 
Washington,  and  in  such  other  papers  published  in  the  section 
of  the  country  most  interested  adversely  to  the  extension  of 
the  patent  as  he  may  deem  proper,  for  at  least  sixty  days  prior 
to  the  day  set  for  hearing  the  case,  a  notice  of  such  applica- 
tion, and  of  the  time  and  place  when  and  where  the  same  will 
be  considered,  that  any  person  may  appear  and  show  cause 
why  the  extension  should  not  be  granted.  [See  prior  patent 
statutes  :  Section  64,  1870  ;  Section  18,  1836.] 

SECTION  4926.  Upon  the  publication  of  the  notice  of  an  ap- 
plication for  an  extension,  the  Commissioner  shall  refer  the 
case  to  the  principal  examiner  having  charge  of  the  class  of 
inventions  to  which  it  belongs,  who  shall  make  the  Commis- 
sioner a  full  report  of  the  case,  stating  particularly  whether 
the  invention  or  discovery  was  new  and  patentable  when  the 
original  patent  was  granted.  [Sec  prior  patent  statutes  :  Sec- 
tion 65,  1870  ;  Section  1,  1848  ;  Section  18,  1836.] 

SECTION  4927.  The  Commissioner  shall,  at  the  time  and 
place  designated  in  the  published  notice,  hear  and  decide  upon 
the  evidence  produced,  both  for  and  against  the  extension  ; 


622  THE   PATENT  STATUTES. 

and  if  it  shall  appear  to  the  satisfaction  of  the  Commissioner 
that  the  patentee,  without  neglect  or  fault  on  his  part,  has 
failed  to  obtain  from  the  use  and  sale  of  his  invention  or  dis- 
covery a  reasonable  remuneration  for  the  time,  ingenuity,  and 
expense  bestowed  upon  it,  and  the  introduction  of  it  into  use, 
and  that  it  is  just  and  proper,  having  due  regard  to  the  public 
interest,  that  the  term  of  the  patent  should  be  extended,  the 
Commissioner  shall  make  a  certificate  thereon,  renewing  and 
extending  the  patent  for  the  term  of  seven  years  from  the  ex- 
piration of  the  first  term.  Such  certificate  shall  be  recorded 
in  the  Patent- Office  ;  and  thereupon  such  patent  shall  have 
the  same  effect  in  law  as  though  it  had  been  originally  granted 
for  twenty-one  years.  [See  prior  patent  statutes  :  Section  66, 
1870  ;  Section  18,  1836.] 

SECTION  4928.  The  benefit  of  the  extension  of  a  patent  shall 
extend  to  the  assignees  and  grantees  of  the  right  to  use  the. 
thing  patented,  to  the  extent  of  their  interest  therein.  [See 
prior  patent  statutes  :  Section  67,  1870  ;  Section  18,  1836.] 

SECTION  4929.  Any  person  who,  by  his  own  industry, 
genius,  efforts,  and  expense,  has  invented  and  produced  any 
new  and  original  design  for  a  manufacture,  bust,  statue,  alto- 
relievo,  or  bas-relief  ;  any  new  and  original  design  for  the 
printing  of  woollen,  silk,  cotton,  or  other  fabrics  ;  any  new 
and  original  impression,  ornament,  patent,  print,  or  picture  to 
be  printed,  painted,  cast,  or  otherwise  placed  on  or  worked 
into  any  article  of  manufacture  ;  or  any  new,  useful,  and  orig- 
inal shape  or  configuration  of  any  article  of  manufacture,  the 
same  not  having  been  known  or  used  by  others  before  his  in- 
vention or  production  thereof,  or  patented  or  described  in  any 
printed  publication,  may,  upon  payment  of  the  fee  prescribed, 
and  other  due  proceedings  had  the  same  as  in  cases  of  inven- 
tions or  discoveries,  obtain  a  patent  therefor.  [See  prior  pat- 
ent statutes  :  Section  71,  1870  ;  Section  11,  March  2,  1861  ;" 
Section  3,  1842.] 

SECTION  4930.  The  Commissioner  may  dispense  with  models 
of  designs  when  the  design  can  be  sufficiently  represented  by 
drawings  or  photographs.  [See  prior  patent  statute  :  Section 
72,  1870.] 


THE    PATENT   STATUTES.  623 

SECTION  4931.  Patents  for  designs  may  be  granted  for  the 
term  of  three  years  and  six  months,  or  for  seven  years,  or  for 
fourteen  years,  as  the  applicant  may,  in  his  application,  elect. 
[See  prior  patent  statutes  :  Section  73,  1870  ;  Section  11, 
1861  ;  Section  3,  1842.] 

SECTION  4932.  Patentees  of  designs  issued  prior  to  the  sec- 
ond day  of  March,  eighteen  hundred  and  sixty -one,  shall  be 
entitled  to  extension  of  their  respective  patents  for  the  term 
of  seven  years,  in  the  same  manner  and  under  the  same 
restrictions  as  are  provided  for  the  extension  of  patents  for  in- 
ventions or  discoveries,  issued  prior  to  the  second  day  of 
March,  eighteen  hundred  and  sixty-one.  [See  prior  patent 
statutes  :  Section  74,  1870  ;  Section  11,  March  2,  1861.] 

SECTION  4933.  All  the  regulations  and  provisions  which 
apply  to  obtaining  or  protecting  patents  for  inventions  or  dis- 
coveries not  inconsistent  with  the  provisions  of  this  Title,  shall 
apply  to  patents  for  designs.  [See  prior  patent  statute  :  Sec- 
tion 76,  1870.  J 

SECTION  4934.  The  following  shall  be  the  rate  for  patent- 
fees  : 

On  filing  each  original  application  for  a  patent,  except  in 
design  cases,  fifteen  dollars. 

On  issuing  each  original  patent,  except  in  design  cases, 
twenty  dollars. 

In  design  cases  :  For  three  years  and  six  months,  ten  dol- 
lars ;  for  seven  years,  fifteen  dollars  ;  for  fourteen  years, 
thirty  dollars. 

On  filing  each  caveat,  ten  dollars. 

On  every  application  for  the  re-issue  of  a  patent,  thirty  dol- 
lars. 

On  filing  each  disclaimer,  ten  dollars. 

On  every  application  for  the  extension  of  a  patent,  fifty 
dollars. 

On  the  granting  of  every  extension  of  a  patent,  fifty  dollars. 

On  an  appeal  for  the  first  time  from  the  primary  examiners 
to  the  examiners-in-chief,  ten  dollars. 

On  every  appeal  from  the  examiners-in-chief  to  the  Com- 
missioner, twenty  dollars. 


624:  THE    PATENT    STATUTES. 

For  certified  copies  of  patents  and  other  papers,  including 
certified  printed  copies,  ten  cents  per  hundred  words. 

For  recording  every  assignment,  agreement,  power  of  attor- 
ney, or  other  paper,  of  three  hundred  words  or  under,  one 
dollar  ;  of  over  three  hundred  and  under  one  thousand  words, 
two  dollars  ;  of  over  one  thousand  words,  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making  them. 
[See  prior  patent  statutes  :  Section  2,  March  24,  1871  ;  Sec- 
tions 68  and  75,  1870  ;  Section  1,  1866  ;  Section  10,  March  2, 
1861  ;  Section  2,  1848  ;  Section  8,  1839  ;  Sections  4,  9,  11, 
1836  ;  Section  11,  1793  ;  Section  7,  1790.J 

SECTION  4935.  Patent-fees  may  be  paid  to  the  Commissioner 
of  Patents,  or  to  the  Treasurer  or  any  of  the  assistant  treas- 
urers of  the  United  States,  or  to  any  of  the  designated  deposi- 
taries, national  banks,  or  receivers  of  public  money,  designated 
by  the  Secretary  of  the  Treasury  for  that  purpose  ;  and  such 
officer  shall  give  the  depositor  a  receipt  or  certificate  of  deposit 
therefor.  All  money  received  at  the  Patent  -Office,  for  any 
purpose,  or  from  any  source  whatever,  shall  be  paid  into  the 
Treasury  as  received,  without  any  deduction  whatever.  [See 
prior  patent  statutes  :  Section  69,  1870  ;  Section  14,  1837.] 

SECTION  4936.  The  Treasurer  of  the  United  States  is  author- 
ized to  pay  back  any  sum  or  sums  of  money  to  any  person 
who  has  through  mistake  paid  the  same  into  the  Treasury,  or 
to  any  receiver  or  depositary,  to  the  credit  of  the  Treasury,  as 
for  fees  accruing  at  the  Patent-Office,  upon  a  certificate 
thereof  being  made  to  the  Treasurer  by  the  Commissioner  of 
Patents.  [See  prior  patent  statutes  :  Section  69,  1870  ;  Sec- 
tion 1,  1842.] 

APPROVED  June  22,  1874. 

PATENT  ACT   OF   FEBRUARY   16,    1875. 

18  STATUTES  AT  LARGE,  PART  3,  316. 

Section  2  of  an  Act  to  facilitate  the  disposition  of  cases  in 
the  Supreme  Court  of  the  United  States,  and  for  other 
purposes. 
SECTION  2.   The  said  [circuit]  courts,  when  sitting  in  equity 


THE   PATENT   STATUTES.  625 

for  the  trial  of  patent  causes,  may  empanel  a  jury  of  not  less 
than  five  and  not  more  than  twelve  persons,  subject  to  such 
general  rules  in  the  premises,  as  may  from  time  to  time  bo 
made  by  the  Supreme  Court,  and  submit  to  them  such  ques- 
tions of  fact  arising  in  such  cause  as  such  circuit  court  shall 
deem  expedient  ;  and  the  verdict  of  such  jury  shall  be  treated 
and  proceeded  upon  in  the  same  manner  and  with  the  same 
effect  as  in  the  case  of  issues  sent  from  chancery  to  a  court  of 
law  and  returned  with  such  findings. 
APPBOVED  February  16,  1875. 


FORMS  OF  PATENT  PLEADINGS. 


DECLARATION. 

CIKCUIT    COURT    OF    THE    UNITED    STATES, 
FOR  THE  DISTRICT  OF  CONNECTICUT. 

OF  THE   SEPTEMBER   TERM  OF   THE  YEAR  EIGHTEEN  HUNDRED  AND 
EIGHTY-THREE. 

DISTRICT  OF  CONNECTICUT,  ss. 

THOMAS  TRACY,  of  Hartford  Connecticut,  who  is  a  citizen 
of  the  State  of  Connecticut,  and  of  the  United  States,  plaintiff 
in  this  suit,  by  John  Jay  his  attorney,  corn-plains  of  the  East- 
ern and  Western  Railroad  Company,  which  is  a  corporation 
created  and  existing  in  due  form  of  law  in  the  States  of  Con- 
necticut and  Rhode  Island,  defendant,  of  a  plea  of  trespass  on 
the  case. 

For  that,  Samuel  Sinclair,  of  New  Haven  Connecticut, 
before  and  at  the  time  of  his  application  for  the  here- 
inafter mentioned  letters  patent,  was  a  citizen  of  the  United 
States,  and  was  the  true  original  and  first  inventor  of  a 
certain  new  and  useful  apparatus,  fully  described  in  the 
specification  of  the  letters  patent  hereinafter  mentioned, 
and  named  therein  an  "Improved  railroad  car-brake,"  and 
which  was  not  known  or  used  in  this  country,  and  not  pat- 
ented or  described  in  any  printed  publication  in  this  or  any 
foreign  country,  before  his  invention  thereof ;  and.  was  not 


FORMS  OF  PATENT  PLEADINGS.  627 

in  public  use  or  on  sale  more  than  two  years  prior  to  his  appli- 
cation for  letters  patent  of  the  United  States  therefor. 

And  for  that,  heretofore,  to  wit :  on  the  first  day  of  June, 
1866,  and  before  the  issuing  of  the  hereinafter  mentioned  let- 
ters patent,  the  said  Samuel  Sinclair,  by  an  instrument  in 
writing  duly  executed  and  delivered  by  him,  and  bearing  date 
on  the  last  named  day,  did  assign  to  Rufus  Russell,  of  Meri- 
den  Connecticut,  all  the  right,  title,  and  interest  whatever  in 
said  invention  ;  and  for  that,  said  instrument  in  writing  was 
duly  recorded  in  the  Patent  Office  on  the  tenth  day  of  June, 
1866. 

And  for  that,  on  the  sixteenth  day  of  July,  1866,  letters 
patent  for  said  invention,  in  due  form  of  law,  were,  on  the 
application  of  said  Samuel  Sinclair,  issued  and  delivered  to 
said  Rufus  Russell,  in  the  name  of  the  United  States  of 
America,  and  under  the  seal  of  the  Patent  Office  of  the 
United  States,  and  were  signed  by  the  Secretary  of  the  Inte- 
rior of  the  United  States,  and  countersigned  by  the  Commis- 
sioner of  Patents  ;  and  for  that,  said  letters  patent  did  grant  to 
said  Rufus  Russell,  his  heirs  or  assigns,  for  the  term  of  seven- 
teen years,  the  exclusive  right  to  make,  use,  and  vend  the  said 
invention  throughout  tfie  United  States,  and  the  Territories 
thereof. 

And  for  that,  the  said  letters  patent  were  inoperative  by 
reason  of  an  insufficient  specification  ;  which  error  arose  from 
inadvertence,  and  without  any  fraudulent  or  deceptive  inten- 
tion ;  and  for  that,  the  said  Rufus  Russell  therefore  duly  sur- 
rendered said  letters  patent,  whereupon  the  Commissioner  of 
Patents,  on  the  fifteenth  day  of  October,  1866,  caused  new 
letters  patent  for  the  same  invention,  and  in  accordance  with 
a  corrected  specification,  to  be  issued  to  said  Rufus  Russell, 
for  the  unexpired  part  of  the  term  of  said  original  letters 
patent. 

And  for  that,  through  mistake,  and  without  any  fraudulent 
or  deceptive  intention,  the  said  Samuel  Sinclair,  in  his  appli- 
cation for  the  said  original  letters  patent,  claimed  to  be  tho 
true  original  and  first  inventor  of  a  certain  part  of  said  appa- 
ratus of  which  he  was  not  the  first  inventor,  and  which  claim 


628  FORMS  OF  PATENT  PLEADINGS. 

was  repeated  in  said  reissue  letters  patent,  and  numbered 
11  two"  therein  ;  and  for  that,  the  said  Rufus  Russell,  without 
unreasonable  delay,  entered  in  the  Patent  Office,  before  the 
commencement  of  this  suit,  a  disclaimer  in  writing  of  the  said 
part  covered  by  the  said  second  claim  of  said  reissue  letters 
patent. 

And  the  plaintiff  says,  that  the  said  Rufus  Russell,  before 
the  committing  of  the  grievances  hereinafter  mentioned,  to 
wit  :  on  the  sixteenth  day  of  September  1868,  by  a  certain 
instrument  in  writing,  duly  executed  and  delivered  by  him, 
and  bearing  date  on  said  last  mentioned  day,  did  grant  to  the 
said  plaintiff,  the  entire  right,  title,  and  interest  in  and  to  the 
then  unexpired  portion  of  the  term  of  said  reissue  patent,  in 
and  throughout  the  States  of  Connecticut  and  Rhode  Island  ; 
which  instrument  in  writing  wras  recorded  in  the  Patent  Office 
on  the  thirty -first  day  of  October,  1868. 

And  the  plaintiff  further  says,  that  always  hitherto,  from 
the  time  of  the  execution  of  the  said  last  mentioned  instru- 
ment, up  to  the  expiration  of  the  said  reissue  letters  patent,  he 
has  vended  to  others  the  right  to  make  and  use  specimens  of 
said  apparatus,  to  his  great  advantage  and  profit. 

Yet  the  defendant,  well  knowing  the  premises,  but  contriv- 
ing to  injure  the  plaintiff,  heretofore,  to  wit  :  on  and  after  the 
first  day  of  January,  1869,  and  up  to  and  on  the  sixteenth  day 
of  July,  1883,  and  during  and  within  the  term  of  seven- 
teen years  mentioned  in  said  letters  patent,  and  after  the 
granting  of  said  reissue  letters  patent,  and  after  the  execution 
of  the  said  grant  to  the  plaintiff,  and  before  the  bringing  of 
this  suit,  and  within  those  parts  of  the  United  States  covered 
by  the  last  mentioned  grant,  unlawfully,  wrongfully,  and  in- 
juriously, and  with  intent  to  deprive  the  plaintiff  of  the  royal- 
ties which  he  might  and  otherwise  would  have  derived  from 
the  sale  of  rights  to  make  and  use  specimens  of  said  apparatus, 
and  without  the  license  of  the  plaintiff  or  of  the  said  Rufus 
Russell,  and  against  the  will  of  the  plaintiff,  did  make,  and 
did  use,  and  did  cause  to  be  made,  and  did  cause  to  be  used, 
sundry  specimens  of  said  apparatus,  and  of  machines  which 
contained  and  employed  substantially  the  invention  covered  by 


FORMS  OF  PATENT  PLEADINGS.  629 

said  reissue  letters  patent  after  said  disclaimer,  in  infringement 
of  the  said  exclusi  ve  rights  secured  to  the  said  Rut  us  Russell 
by  the  letters  patent  aforesaid,  and  granted  by  him  to  the  said 
plaintiff,  as  hereinbefore  set  forth,  and  contrary  to  the  statute 
of  the  United  States  in  such  cases  made  and  provided  ;  where- 
by the  plaintiff  has  been  and  is  greatly  injured,  and  has  been 
deprived  of  large  royalties  which  he  might  and  otherwise 
would  have  derived  from  the  sale  of  rights  to  make  and  use 
specimens  of  said  apparatus,  and  has  sustained  actual  damages 
thereby  to  the  amount  of  Three  Thousand  Dollars, 

Wherefore,  by  force  of  the  statutes  of  the  United  States,  a 
right  of  action  has  accrued  to  the  said  plaintiff  to  recover  the 
said  actual  damages,  and  such  additional  amount,  not  exceed- 
ing, in  the  whole,  three  times  the  amount  of  such  actual  dam- 
ages, as  the  court  may  see  fit  to  adjudge  and  order,  besides 
costs. 

Yet  the  defendant,  though  often  requested  so  to  do,  lias 
never  paid  the  same,  nor  any  part  thereof,  but  has  refused, 
and  still  refuses  so  to  do,  and  therefore  the  plaintiff  brings  hia 
suit. 

JOHN   JAY, 
Attorney  for  the  Plaintiff. 

PLEA  IN   BAR. 

CIRCUIT    COURT    OF    THE    UNITED    STATES, 
FOR  THE  DISTRICT  OP  CONNECTICUT. 


THOMAS  TRACY 


V. 


Case. 

THE  EASTERN  AND  WESTERN   RAILROAD 
COMPANY. 


Trespass  on  the 


And   the  said   defendant,   by   Richard    Ray  its  attorney, 


630  FORMS  OF  PATENT  PLEADINGS. 

conies  and  defends  the  wrong  and  injury  when,  etc.,  and  says, 
that  it  is  not  guilty  of  the  supposed  grievances  above  laid  to 
its  charge,  or  any  or  either  of  them,  or  any  part  thereof,  in 
manner  and  form  as  the  said  plaintiff  has  above  thereof  com- 
plained against  it.  And  of  this  the  defendant  puts  itself  upon 
the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  the  apparatus  covered  by  the  reissue  letters  patent  men- 
tioned  in  the  plaintiff's  declaration,  was  not  an  invention  when 
produced  by  the  said  Samuel  Sinclair.  And  of  this  the  de- 
fendant puts  itself  upon  the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says,  that 
the  said  apparatus  was  not  novel  when  produced  by  the  said 
Samuel  Sinclair  ;  for  that,  an  apparatus  substantially  identi- 
cal with  it  in  character,  was  previously  patented  in  letters 
patent  of  the  United  States,  granted  to  Mason  Montgomery, 
May  16,  1856  ;  and  for  that,  another  like  apparatus  was  pre- 
viously described  on  page  777  of  a  certain  printed  book  enti- 
tled "  The  Practical  Railroad  Carriage  Builder,"  published  in 
London,  England,  in  the  year  1858,  by  William  Wright,  of 
Paternoster  Row  ;  and  for  that,  still  another  like  apparatus 
was  previously  known  and  used  by  Nathan  Norris,  of  Roches- 
ter New  York,  on  the  New  York  Central  Railroad,  in  said 
Rochester,  and  elsewhere  on  said  railroad  in  the  State  of  New 
York,  in  the  year  1859.  And  of  this  the  defendant  puts  itself 
upon  the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  said  Samuel  Sinclair  actually  abandoned  his  said  alleged 
invention,  before  he  made  any  application  for  letters  patent 
therefor.  And  this  the  defendant  is  ready  to  verify. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  said  alleged  invention  was  in  public  use  with  the  consent 
of  said  Samuel  Sinclair,  more  than  two  years  before  he  made 
any  application  for  letters  patent  thereon.  And  of  this  the 
defendant  puts  itself  upon  the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  the  alleged  inoperativeness,  of  the  original  patent  men- 


FORMS  OF  PATENT  PLEADINGS.  631 

tioned  in  said  declaration,  did  not  arise  from  inadvertence. 
And  of  this  the  defendant  puts  itself  upon  the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  the  reissue  letters  patent  mentioned  in  said  declaration, 
are  not  for  the  same  invention  as  the  said  original  letters 
patent  upon  the  surrender  of  which  they  were  issued.  And 
of  this  the  defendant  puts  itself  upon  the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says,  that 
before  July  16,  1866,  letters  patent  of  the  Empire  of  France 
were  granted  on  said  apparatus,  to  said  Samuel  Sinclair,  for 
fourteen  years  from  August  1,  1865.  And  this  the  defend- 
ant is  ready  to  verify. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that,  prior  to  January  1, 1869,  the  Eastern  Railroad  Company, 
and  the  Western  Railroad  Company,  were  separate  corpora- 
tions, created  and  existing  in  due  form  of  law,  in  the  States  of 
Rhode  Island  and  Connecticut,  respectively  ;  and  that  each 
had  theretofore  purchased,  and  then  possessed,  a  license  ex- 
ecuted by  said  Rufus  Russell,  authorizing  the  licensee  to  make 
any  convenient  number  of  specimens  of  said  apparatus,  and  to 
use  the  same  upon  the  railroad  of  the  licensee,  and  upon  the 
railroad  of  any  other  like  licensee,  throughout  the  term  of  said 
reissue  letters  patent  ;  and  that  on  or  about  said  January  1, 
1869,  the  said  Eastern  Railroad  Company  and  the  said 
Western  Railroad  Company  were  lawfully  consolidated  into 
one  corporation,  to  wit  :  this  defendant ;  and  that  said  de- 
fendant thereafter  operated  the  said  railroads  of  its  said  con- 
stituent corporations,  and  operated  no  railroad  car  brakes,  nor 
any  specimen  of  the  said  apparatus,  elsewhere.  And  this  the 
defendant  is  ready  to  verify. 

RICHARD  RAT, 
Attorney  for  the  Defendant. 


FORMS  OF  PATENT  PLEADINGS. 

REPLICATION. 

CIRCUIT    COURT    OP   THE    UNITED    STATES, 
FOR  THE  DISTRICT  OF  CONNECTICUT. 


THOMAS  TRACT 


v. 


Case. 

THE   EASTERN  AND  WESTERN   RAILROAD 
COMPANY. 


Trespass  on  the 


And  the  said  plaintiff,  as  to  the  said  pleas  of  the  said  de- 
fendant by  it  above  pleaded,  of  which  it  has  put  itself  upon 
the  country,  doth  the  like. 

And  the  plaintiff  as  to  the  said  plea  of  the  defendant,  by 
it  fourthly  above  pleaded,  says  that  the  said  Samuel  Sinclair 
did  not  actually  abandon  said  invention  before  making  any  ap- 
plication for  letters  patent  thereon.  And  of  this  the  plaintiff 
puts  himself  upon  the  country. 

And  the  plaintiff,  as  to  the  said  plea  of  the  defendant 
eighthly  above  pleaded,  says  that  no  letters  patent  of  the  Em- 
pire of  France  were  granted  to  said  Samuel  Sinclair  on.,  said 
apparatus,  before  the  granting  of  the  original  letters  patent 
mentioned  in  said  declaration.  And  of  this  the  plaintiff  puts 
himself  upon  the  country. 

And  the  plaintiff,  as  to  the  said  plea  of  the  defendant 
ninthly  above  pleaded,  says  that  the  licenses,  mentioned  in  said 
plea,  were  had  and  obtained  from  the  said  Rufus  Russell  by 
the  fraud  and  covin  of  the  said  alleged  licensees,  respectively. 
And  this  the  plaintiff  is  ready  to  verify. 

JOHN  JAY, 
Attorney  for  the  Plaintiff. 


FORMS  OF  PATENT  PLEADINGS. 


633 


REJOINDER. 

CIRCUIT    COURT    OF    THE    UNITED    STATES, 
FOR  THE  DISTRICT  OF  CONNECTICUT. 


THOMAS  TRACY 
v. 

THE  EASTERN   AND  WESTERN  RAILROAD 
COMPANY. 


Trespass  on  the 
Case. 


And  the  said  defendant,  as  to  the  said  replication  of  the  said 
plaintiff,  to  the  said  fourth  and  eighth  pleas  of  the  said  de- 
fendant, and  of  which  he  hath  put  himself  upon  the  country, 
doth  the  like. 

And  the  defendant  as  to  the  replication  of  the  plaintiff  to 
the  said  ninth  plea  of  the  defendant,  says  that  neither  of  the 
licenses  mentioned  in  said  plea  was  obtained  from  said  Rufus 
Russell  by  the  fraud  or  covin  of  the  licensee  mentioned 
therein.  And  of  this  the  defendant  puts  itself  upon  the 
country. 

RICHARD  RAY, 
Attorney  for  the  Defendant. 


634:  FORMS  OF  PATENT  PLEADINGS. 

SUE-REJOINDER. 

CIKCUIT    COUKT    OF    THE    UNITED    STATES, 
FOR  THE  DISTRICT  OF  CONNECTICUT. 


THOMAS  TRACY 

Trespass  on  the 

Case. 

THE  EASTERN   AND  WESTERN  RAILROAD 
COMPANY. 


And  the  said  plaintiff  as  to  the  said  rejoinder  of  the  said 
defendant,  and  whereof  it  hath  put  itself  upon  the  country, 
doth  the  like. 

JOHN   JAY, 
Attorney  for  the  Plaintiff. 


BILL  OF  COMPLAINT. 

CIRCUIT    COURT    OF    THE    UNITED    STATES, 
FOR  THE  DISTRICT  OF  CONNECTICUT. 

To  the  Judges  of  the  Circuit  Court  of  the  United  States,  for 

the  District  of  Connecticut. 
IN  EQUITY. 

THOMAS  TRACY,  of  Hartford  Connecticut,  who  is  a  citizen 
of  the  State  of  Connecticut,  and  of  the  United  States,  brings 
this  his  bill  into  this  court,  against  The  Eastern  and  Western 
Railroad  Company,  which  is  a  corporation  created  and  exist- 
ing in  due  form  of  law  in  the  States  of  Connecticut  and 
Rhode  Island. 

And  thereupon  your  orator  complains  and  says,  on  informa- 
tion and  belief,  that  Samuel  Sinclair,  of  New  Haven  Con- 


FORMS  OF  PATENT  PLEADINGS.  635 

necticut,  before  and  at  the  time  of  his  application  for  the 
hereinafter  mentioned  letters  patent,  was  a  citizen  of  the 
United  States,  and  was  the  true  original  and  first  inventor  of 
a  certain  new  and  useful  apparatus,  fully  described  in  the 
specification  of  the  letters  patent  hereinafter  mentioned,  and 
named  therein  an  "  Improved  railroad  car- brake,''  and  which 
was  not  known  or  used  in  this  country,  and  not  patented  or 
described  in  any  printed  publication  in  this  or  in  any  foreign 
country,  before  his  invention  thereof  ;  and  was  not  in  public 
use  or  on  sale  more  than  two  years  prior  to  his  application  for 
letters  patent  of  the  United  States  therefor. 

And  your  orator  further  shows  unto  your  Honors,  on  infor- 
mation and  belief,  that  on  the  first  day  of  June,  1876,  and  be- 
fore the  issuing  of  the  hereinafter  mentioned  letters  patent, 
the  said  Samuel  Sinclair,  by  an  instrument  in  writing  duly 
executed  and  delivered  by  him,  and  bearing  date  on  the  last 
named  day,  did  assign  to  Rufus  Russell,  of  Meriden  Connect- 
icut, all  the  right,  title,  and  interest  whatever  in  said  inven- 
tion ;  and  that  said  instrument  in  writing  was  duly  recorded 
in  the  Patent  Office  on  the  tenth  day  of  June,  1876. 

And  your  orator  further  shows,  on  information  and  belief, 
that  on  the  sixteenth  day  of  July,  1 876,  letters  patent  for  said 
invention,  in  due  form  of  law,  were,  on  the  application  of  said 
Samuel  Sinclair,  issued  and  delivered  to  said  Rofna  Russell,  in 
the  name  of  the  United  States  of  America,  and  under  the  seal 
of  the  Patent  Office  of  the  United  States,  and  were  signed  by 
the  Secretary  of  the  Interior  of  the  United  States,  and  coun- 
tersigned by  the  Commissioner  of  Patents  ;  and  that  the  said 
letters  patent  did  grant  to  the  said  Rufus  Russell,  his  heirs  or 
assigns,  for  the  term  of  seventeen  years,  the  exclusive  right  to 
make,  use,  and  vend  the  said  invention  throughout  the  United 
States,  and  the  Territories  thereof. 

And  your  orator  further  shows,  on  information  and  belief, 
that  said  letters  patent  were  inoperative  by  reason  of  an  insuffi- 
cient specification  ;  and  that  the  error  arose  from  inadvertence, 
and  without  any  fraudulent  or  deceptive  intention  ;  and  that 
the  said  Rufus  Russell  therefore  duly  surrendered  said  letters 
patent,  whereupon  the  Commissioner  of  Patents,  on  the 


636  FORMS  OF  PATENT  PLEADINGS. 

fifteenth  day  of  October,  1876,  caused  new  letters  patent  for 
the  same  invention,  and  in  accordance  with  a  corrected  specifi- 
cation, to  be  issued  to  the  said  Bufus  Russell,  for  the  unex- 
pired  part  of  the  term  of  said  original  letters  patent. 

And  your  orator  further  shows,  on  information  and  belief, 
that  through  mistake,  and  without  any  fraudulent  or  deceptive 
intention,  the  said  Samuel  Sinclair,  in  his  application  for  said 
original  letters  patent,  claimed  to  be  the  true  original  and  first 
inventor  of  a  certain  part  of  the  said  apparatus  of  which  he 
was  not  the  first  inventor,  and  which  claim  was  repeated  in 
said  reissue  letters  patent  and  numbered  "  two"  therein  ;  and 
that  the  said  Rufus  Russell,  without  unreasonable  delay, 
entered  in  the  Patent  Office,  before  the  commencement  of  this 
suit,  a  disclaimer  in  writing  of  the  said  part  covered  by  the 
said  second  claim  of  said  reissue  letters  patent. 

And  your  orator  further  shows,  that  the  said  Rufus  Russell, 
on  the  sixteenth  day  of  September,  1878,  by  a  certain  instru- 
ment in  writing,  duly  executed  and  delivered  by  him,  and 
bearing  date  on  said  last  mentioned  day,  did  grant  to  your 
orator  the  entire  right,  title,  and  interest,  in  and  to  the  then 
unexpired  portion  of  the  term  of  said  reissue  letters  patent,  in 
and  throughout  the  States  of  Connecticut  and  Rhode  Island  ; 
and  that  said  instrument  in  writing  was  recorded  in  the  Patent 
Office  on  the  thirty-first  day  of  October,  1878. 

And  your  orator  further  shows,  on  information  and  belief, 
that  the  said  defendant,  on  and  after  the  first  day  of  January 
1879,  and  up  to  the  time  of  the  commencement  of  this  action, 
and  during  and  within  the  term  of  seventeen  years  mentioned 
in  said  letters  patent,  and  after  the  granting  of  said  reissue 
letters  patent,  and  within  those  parts  of  the  United  States 
covered  by  the  said  grant  to  your  orator,  unlawfully,  wrong- 
fully, and  injuriously,  and  with  intent  to  derive  profits  from 
making  and  using  said  apparatus,  and  to  deprive  your  orator 
of  the- royalties  which  he  might  and  otherwise  would  have  de- 
rived from  the  sale  of  rights  to  make  and  use  specimens 
thereof,  and  without  the  license  of  your  orator,  or  of  the  said 
Rufus  Russell,  and  against  the  will  of  your  orator,  did  make 
and  did  use,  and  did  cause  to  be  made,  and  did  cause  to  be 
used,  sundry  specimens  of  said  apparatus,  and  of  machines 


FORMS  OF  PATENT  PLEADINGS.  637 

which  contained  and  employed  substantially  the  invention  cov- 
ered by  said  reissue  letters  patent  after  said  disclaimer,  in 
infringement  of  the  said  exclusive  rights  secured  to  the  said 
Rufus  Russell  by  the  letters  patent  aforesaid,  and  granted  by 
him  to  your  orator  as  hereinbefore  set  forth  ;  but  how  many 
such  specimens  the  defendant  so  made  and  used,  or  caused  to 
be  made  and  used,  your  orator  is  ignorant,  and  cannot  set 
forth  ;  but  your  orator  avers,  on  information  and  belief,  that 
the  defendant  so  made  and  used,  and  caused  to  be  made  and 
used,  a  large  number  thereof,  and  that  it  derived  large  profits 
therefrom,  but  to  what  amount  your  orator  is  ignorant  and 
cannot  set  forth,  and  that  your  orator  has  been  deprived  of 
large  royalties  by  reason  of  the  aforesaid  infringement  of  the 
defendant,  and  has  thus  incurred  large  damages  thereby. 

And  your  orator  further  shows,  that  he  fears  and  has  reason 
to  fear,  that  unless  the  defendant  is  restrained  by  a  writ  of 
injunction  issuing  out  of  this  Court,  it  will  continue  to  make 
and  to  use  numbers  of  specimens  of  said  apparatus,  and  there- 
by will  cause  irreparable  injury  to  your  orator's  aforesaid  ex- 
clusive rights. 

And  your  orator  further  shows,  that  the  validity  of  the  said 
reissue  letters  patent,  has  heretofore  been  uniformly  affirmed, 
after  strenuous  litigation,  by  verdicts  and  judgments  at  law, 
and  by  final  decrees  in  equity,  in  several  of  the  Circuit  Courts 
of  the  United  States  ;  and  that  the  railroad  companies  of  the 
United  States  have  long  generally  acquiesced  in  that  validity. 

And  your  orator  prays  your  Honors  to  grant  unto  your 
orator  a  preliminary,  and  also  a  permanent  writ  of  injunction, 
issuing  out  of  and  under  the  seal  of  this  honorable  Court, 
directed  to  the  said  Eastern  and  Western  Railroad  Company, 
and  strictly  enjoining  it  and  its  officers,  agents,  and  employes, 
not  to  make,  or  use,  or  sell,  nor  cause  to  be  made,  or  used,  or 
sold,  any  railroad  car  or  other  machine  or  apparatus  containing 
or  employing  the  invention  covered  and  secured  by  said  reissue 
letters  patent. 

And  your  orator  further  prays,  that  the  defendant,  by  a  de- 
cree of  this  Court,  may  be  compelled  to  account  for,  and  pay 
over  to  your  orator,  all  the  profits  which  the  defendant  has 
derived  or  shall  have  derived  from  any  making  and  using,  or 


638  FORMS  OF  PATENT  PLEADINGS. 

from  any  using  of  any  specimen  of  the  apparatus  covered 
and  secured  by  said  reissue  letters  patent  ;  and  also  that  the 
defendant  be  decreed  to  pay  all  the  damages  which  your  orator 
has  incurred,  or  shall  have  incurred,  on  account  of  the  de- 
fendant's infringement  of  said  reissue  letters  patent  ;  and  also 
that  the  defendant  be  decreed  to  pay  the  costs  of  this  suit  ; 
and  that  your  orator  may  have  such  further  and  other  relief, 
as  the  equity  of  the  case,  or  the  statutes  of  the  United  States, 
may  require,  and  to  this  Court  may  seem  just. 

To  the  end,  therefore,  that  the  defendant  may,  if  it  can, 
show  why  your  orator  should  not  have  the  relief  hereby  pray- 
ed, and  may,  under  the  oath  of  its  proper  officers,  and  accord- 
ing to  the  best  and  utmost  of  their  knowledge,  remembrance, 
information  or  belief,  full,  true,  direct,  and  perfect  answer 
make  to  such  of  the  several  interrogatories  hereinafter  num- 
bered and  set  forth,  as  by  the  note  hereunder  written,  it  is 
required  to  answer  ;  that  is  to  say  : 

1.  Whether,  after  the  first  day  of  January,  eighteen  hun- 
dred and  seventy -nine,  it  made  or  used,  or  caused  to  be  made 
or  used,  anywhere  in  Rhode  Island  or  Connecticut,  any  speci- 
men of  any  apparatus  substantially  like  the  invention  covered 
and  secured  by  the  said  reissue  letters  patent  ;  and  if  so,  how 
many  such  specimens  it  so  made,  and  how  many  it  so  used, 
and  how  long  it  used  the  same  : 

May  it  please  your  Honors  to  grant  unto  your  orator  a  writ 
of  subposna  ad  respondendum,  issuing  out  of  and  under  the 
seal  of  this  Honorable  Court,  and  directed  to  the  said  The 
Eastern  and  Western  Railroad  Company,  and  commanding  it 
to  appear  and  make  answer  to  this  bill  of  complaint,  and  to 
perform  and  abide  by  such  order  and  decree  herein  as  to  this 
Court  shall  seem  just. 

And  your  orator  will  ever  pray. 

THOMAS   TKACY, 

Complainant. 
JOHN   JAY, 
Solicitor  for  the  Complainant. 

LUTHER  LEARNED, 

Of  Counsel. 


FORMS  OF  PATENT  PLEADINGS.  639 

The  defendant,  The  Eastern  and  Western  Railroad  Com- 
pany,  is  required  to  answer  the  interrogatory  numbered  1. 

JOHN   JAY, 
Solicitor  for  the  Complainant. 

STATE  OF  CONNECTICUT,  COUNTY  OF  HAETFOBD,  ss. 

On  this  twenty-sixth  day  of  June,  1883,  before  me  per- 
sonally appeared  Thomas  Tracy,  and  made  oath  that  he  has 
read  the  foregoing  bill,  subscribed  by  him,  and  knows  the  con- 
tents thereof,  and  that  the  same  is  true  of  his  own  knowledge, 
except  as  to  matters  which  are  therein  stated  to  be  based  on 
information  and  belief,  and  that  as  to  those  matters  he  believes 
it  to  be  true. 

ARTHUR   ANSON, 

Notwry  Public. 


l-l 


PLEA  IN   EQUITY. 

CIRCUIT    COURT    OF    THE    UNITED    STATES, 
FOR    THE    DISTRICT    OP    CONNECTICUT. 


THOMAS  TRACY 

In  Equity. 

THE  EASTERN  AND  WESTERN   RAILROAD 
COMPANY. 


The  plea  of  The  Eastern  and  Western  Railroad  Company, 
defendant,  to  the  bill  of  complaint  of  Thomas  Tracy,  com- 
plainant. 

This  defendant,  by  protestation,  not  confessing  or  acknowl- 
edging the  matters  and  things  in  and  by  said  bill  set  forth  and 


G-iO  FOEM8  OF  PATENT  PLEADINGS. 

alleged  to  be  true,  in  such  manner  and  form  as  the  same  are 
thereby  and  therein  set  forth  and  alleged  ;  for  plea  to  the 
whole  of  said  bill,  says  that,  prior  to  January  1,  1879,  the 
Eastern  Railroad  Company  and  the  Western  Railroad  Com- 
pany were  separate  corporations,  created  and  existing  in  due 
form  of  law  in  the  States  of  Rhode  Island  and  Connecticut, 
respectively  ;  and  that  each  had  theretofore  purchased,  and 
then  possessed,  a  license  executed  by  said  Rufus  Russell,  au- 
thorizing the  licensee  to  make  any  convenient  number  of  spec- 
imens of  said  apparatus,  and  to  use  the  same  upon  the  rail- 
road of  the  licensee,  and  the  railroad  of  any  other  like  licensee, 
throughout  the  term  of  said  reissue  letters  patent  ;  and  that 
on  or  about  the  said  January  1,  1879,  the  said  Eastern  Rail- 
road Company,  and  the  said  "Western  Railroad  Company,  were 
lawfully  consolidated  into  one  corporation,  to  wit  :  this  de- 
fendant ;  and  that  this  defendant  thereafter  operated  the  said 
railroads  of  its  said  constituent  corporations,  and  operated  no 
railroad  car-brakes,  nor  any  specimen  of  the  said  apparatus, 
elsewhere. 

All  which  statements  this  defendant  doth  aver  to  be  true, 
and  it  pleads  the  said  licenses  to  the  said  complainant's  bill, 
and  prays  the  judgment  of  this  Honorable  Court,  whether  it 
should  be  compelled  to  make  any  other  or  further  answer  to 
the  said  bill,  and  prays  to  be  hence  dismissed  with  its  costs  in 
this  behalf  sustained. 

In  witness  whereof,  the  said  defendant,  The  Eastern  and 
Western  Railroad  Company,  has  hereunto  affixed  its  corporate 
seal,  and  caused  the  same  to  be  attested  by  Charles  Clark,  its 
secretary. 

-~^^-  CHARLES    CLARK, 

)  r.  s.    I  Secretary. 

- — , — '  RICHARD    RAY, 

Solicitor  and  Counsel  for  the  Defendant. 

I  hereby  certify  that  in  my  opinion  the  foregoing  plea  is 
well  founded  in  point  of  law. 

RICHARD  RAY, 
Solicitor  and  Counsel  for  the  Defendant. 


FORMS  OF  PATENT  PLEADINGS.  641 

STATE  OF  CONNECTICUT,  COUNTY  OF  HARTFORD,  ss. 

On  this  third  day  of  September,  1883,  before  me  per- 
son all  j  appeared  Charles  Clark,  and  made  oath  that  he  has 
read  the  above  plea,  and  knows  the  contents  thereof,  and  that 
it  is  not  interposed  for  delay,  and  that  it  is  true  in  point  of 
fact. 

— *•—  ARTHUR   ANSON, 

1  L.  s.    [  Notary  Public. 


ANSWER. 

CIRCUIT    COURT    OF    THE    UNITED    STATES, 
FOR    THE    DISTRICT    OF    CONNECTICUT. 


THOMAS  TRACY 

v. 

In  Equity. 

THE   EASTERN  AND  WESTERN   RAILROAD 
COMPANY. 


The  defendant,  for  answer  to  the  bill  of  complaint  of  the 
complainant,  answering,  says  : 

The  defendant  admits,  that  it  is  a  corporation  created  and 
existing  in  due  form  of  law  in  the  States  of  Connecticut  and 
Rhode  Island. 

The  defendant  denies,  on  information  and  belief,  that 
Samuel  Sinclair  was  the  true,  original,  and  first  inventor  of 
the  apparatus  covered  by  the  original  letters  patent  mentioned 
in  said  bill ;  and  the  defendant  says,  on  information  and  be- 
lief, that  said  apparatus  was  not  an  invention  when  produced 
by  said  Samuel  Sinclair  ;  and  that  it  was  not  novel  at  that 
time,  and  that  an  apparatus  substantially  identical  with  it  in 


642  FORMS  OF  PATENT  PLEADINGS. 

character  was  previously  patented  in  letters  patent  of  the 
United  States,  granted  to  Mason  Montgomery,  May  16,  1856  ; 
and  that  another  like  apparatus  was  previously  described  on 
page  777  of  a  certain  printed  book  entitled  "  The  Practical 
Railroad  Carriage  Builder,"  published  in  London,  England, 
in  the  year  1858,  by  William  Wright,  of  Paternoster  Row  ; 
and  that  still  another  like  apparatus  was  previously  known 
and  used  by  Nathan  Morris,  of  Rochester  New  York,  on  the 
New  York  Central  Railroad,  in  said  Rochester,  and  elsewhere 
on  said  railroad,  in  the  State  of  New  York,  in  the  year  1859. 

And  the  defendant  further  says,  on  information  and  belief, 
that  said  Samuel  Sinclair  actually  abandoned  his  said  alleged 
invention,  before  he  made  any  application  for  letters  patent 
therefor. 

And  the  defendant  further  says,  on  information  and  belief, 
that  the  said  alleged  invention  was  in  public  use  more  than 
two  years  before  said  Samuel  Sinclair  made  any  application 
for  letters  patent  thereon. 

.  And  the  defendant  further  says,  that  it  has  no  knowledge 
whether  the  said  Samuel  Sinclair  ever  executed  and  delivered 
any  instrument  of  assignment  to  Rufus  Russell,  purporting  to 
convey  the  entire  right,  title,  and  interest  in  said  alleged  in- 
vention. 

And  the  defendant  further  says,  that  it  has  no  knowledge 
whether  any  original  letters  patent  for  said  alleged  invention, 
were  ever  issued  and  delivered  to  said  Rufus  Russell. 

And  'the  defendant  denies,  on  information  and  belief,  that 
any  such  letters  patent  were  inoperative  by  reason  of  an  in- 
sufficient specification  ;  and  that  any  such  inoperativeness 
arose  from  inadvertence,  and  without  fraudulent  or  deceptive 
intention. 

The  defendant  further  says,  that  it  has  no  knowledge 
whether  said  Rufus  Russell  ever  surrendered  any  such  letters 
patent,  or  whether  the  Commissioner  of  Patents  ever  caused 
any  reissue  letters  patent  to  be  issued  to  said  Russell  for  the 
unexpired  part  of  the  term  of  any  such  original  letters  patent. 

And  the  defendant  further  says,  on  information  and  belief, 
that  the  alleged  reissue  letters  patent  mentioned  in  the  com- 


FORMS  OF  PATENT  PLEADINGS.  643 

plainant's  bill,  are  not  for  the  same  invention  as  the  alleged 
original  letters  patent  upon  the  surrender  of  which  they  are 
alleged  in  said  bill  to  have  been  issued. 

And  the  defendant  further  says,  that  it  has  no  knowledge 
whether,  through  mistake,  and  without  any  fraudulent  inten- 
tion, the  said  Samuel  Sinclair,  in  his  application  for  said 
alleged  original  letters  patent,  claimed  to  be  the  true,  original, 
and  first  inventor  of  a  certain  part  of  the  said  apparatus  of 
which  he  was  not  the  first  inventor  ;  or  whether  the  said 
Rufus  Russell,  without  unreasonable  delay,  entered  in  the 
Patent  Office,  before  the  commencement  of  this  suit,  a  dis- 
claimer in  writing  of  any  such  part. 

And  the  defendant  further  says,  that  it  has  no  knowledge 
whether  the  said  Rufus  Russell  ever  executed  and  delivered 
any  instrument  of  grant  to  the  complainant,  purporting  to 
convey  the  entire  right,  title,  and  interest  in  and  to  the  then 
unexpired  portion  of  the  term  of  said  alleged  reissue  letters 
patent,  in  and  throughout  the  States  of  Connecticut  and 
Rhode  Island. 

And  the  defendant  farther  says,  on  information  and  belief, 
that  before  July  16,  1876,  letters  patent  of  the  empire  of 
France  were  granted,  on  said  apparatus,  to  said  Samuel  Sin- 
clair, for  fourteen  years  from  August  1,  1875. 

And  the  defendant  denies,  on  information  and  belief,  that 
it  ever  made  or  used,  or  caused  to  be  made  or  used,  any  speci- 
men of  any  apparatus  covered  by  said  reissue  letters  patent ; 
and  likewise  denies  that  it  ever  derived  any  profit  from  any 
such  making  or  using  ;  and  likewise  denies  that  the  defendant 
ever  incurred  any  damage  on  account  of  any  such  transactions 
committed  or  caused  to  be  committed  by  the  defendant. 

The  defendant  further  says,  that  it  has  no  knowledge 
whether  the  validity  of  any  such  alleged  reissue  patent  has 
heretofore  been  uniformly  affirmed,  after  strenuous  litigation, 
by  verdicts  or  judgments  at  law,  or  by  final  decrees  in  equity, 
in  several  of  the  Circuit  Courts  of  the  United  States  ;  but  the 
defendant  denies,  on  information  and  belief,  that  any  such 
validity  has  been  generally  acquiesced  in  by  the  railroad  com- 
panies of  the  United  States. 


644  FOKMS  OF  PATENT  PLEADINGS. 

All  of  which  statements  and  defences  this  defendant  is  ready 
to  aver,  maintain,  and  prove,  as  this  Honorable  Court  shall 
direct  ;  and  it  prays  hence  to  be  dismissed  with  its  costs  in  this 
behalf  sustained. 

In  witness  whereof,  the  said  defendant,  The  Eastern  and 
Western  Railroad  Company,  has  hereunto  affixed  its  corporate 
seal,  and  caused  the  same  to  be  attested  by  Charles  Clark,  its 
Secretary. 

CHAKLES   CLAKK, 

Secretary. 


1 


RICHARD  RAY, 
Solicitor  and  Counsel  for  the  Defendant. 


STATE  OF  CONNECTICUT,  COUNTY  OF  HARTFORD,  ss. 

On  this  first  day  of  October,  1883,  before  me  personally 
appeared  Charles  Clark,  and  made  oath  that  he  has  read  the 
foregoing  answer,  and  knows  the  contents  thereof  ;  and  that 
the  same  is  true  of  his  own  knowledge,  except  as  to  the  mat- 
ters which  are  therein  admitted  or  stated  to  be  based  on  in- 
formation and  belief,  and  as  to  those  matters  he  believes  it  to 
be  true. 

—  •  —  ARTHUR   ANSON, 

i  ^a.   I  Notary  Public. 


FORMS  OF  PATENT  PLEADINGS. 


645 


REPLICATION  IN  EQUITY. 

CIRCUIT    COURT    OF    THE    UNITED    STATES, 
FOR    THE    DISTRICT    OP    CONNECTICUT. 


THOMAS  TRACY 


THE  EASTERN  AND  WESTERN  RAILROAD 
COMPANY. 


In  Equity. 


This  repliant,  saving  and  reserving  unto  himself  all  and 
all  manner  of  advantage  of  exception  to  the  manifold  insuffi- 
ciencies of  the  said  answer,  for  replication  thereunto  saith,  that 
he  will  aver  and  prove  his  said  bill  to  be  true,  certain,  and 
sufficient  in  the  law  to  be  answered  unto  ;  and  that  the  said 
answer  of  the  said  defendant  is  uncertain,  untrue,  and  insuffi- 
cient to  be  replied  unto  by  this  repliant  ;  without  this,  that 
any  other  matter  or  thing  whatsoever  in  the  said  answer  con- 
tained, material  or  effectual  in  the  law  to  be  replied  unto,  con- 
fessed and  avoided,  traversed  or  denied,  is  true  ;  all  which 
matters  and  things  this  repliant  is,  and  will  be,  ready  to  aver 
and  prove,  as  this  Honorable  Court  shall  direct  ;  and  humbly 
prays,  as  in  and  by  his  said  bill  he  hath  already  prayed. 

JOHN   JAY, 
Solicitor  for  the  Complamant. 


RULES  OF  PRACTICE 

FOK   THE 

COURTS  OF  EQUITY  OF  THE  UNITED    STATES. 
IN  FORCE  OCTOBER  1,  1883. 


PRELIMINARY  REGULATIONS. 

RULE  1. 

THE  circuit  courts,  as  courts  of  equity,  shall  be  deemed 
always  open  for  the  purpose  of  filing  bills,  answers,  and  other 
pleadings,  for  issuing  and  returning  mesne  and  final  process 
and  commissions,  and  for  making  and  directing  all  interlocu- 
tory motions,  orders,  rules,  and  other  proceedings,  preparatory 
to  the  hearing  of  all  causes  upon  their  merits. 

RULE  2. 

The  clerk's  office  shall  be  open,  and  the  clerk  shall  be  in 
attendance  therein,  on  the  first  Monday  of  every  month,  for 
the  purpose  of  receiving,  entering,  entertaining,  and  disposing 
of  all  motions,  rules,  orders,  and  other  proceedings,  which  are 
grantable  of  course,  and  applied  for,  or  had  by  the  parties,  or 
their  solicitors,  in  all  causes  pending  in  equity,  in  pursuance 
of  the  rules  hereby  prescribed. 

RULE  3. 

Any  judge  of  the  circuit  court,  as  well  in  vacation  as  in 
term,  may,  at  chambers,  or  on  the  rule-days  at  the  clerk's 
office,  make  and  direct  all  such  interlocutory  orders,  rules,  and 


EQUITY    RULES.  647 

other  proceedings,  preparatory  to  the  hearing  of  all  causes 
upon  their  merits,  in  the  same  manner  and  with  the  same 
effect  as  the  circuit  court  could  make  and  direct  the  same  in 
term,  reasonable  notice  of  the  application  therefor  being  first 
given  to  the  adverse  party,  or  his  solicitor,  to  appear  and  show 
cause  to  the  contrary  at  the  next  rule-day  thereafter,  unless 
some  other  time  is  assigned  by  the  judge  for  the  hearing. 

RULE  4. 

All  motions,  rules,  orders,  and  other  proceedings  made  and 
directed  at  chambers,  or  on  rule-days  at  the  clerk's  office, 
whether  special  or  of  course,  shall  be  entered  by  the  clerk  in 
an  order-book,  to  be  kept  at  the  clerk's  office,  on  the  day 
when  they  are  made  and  directed  ;  which  book  shall  be  open 
at  all  office  hours  to  the  free  inspection  of  the  parties  in  any 
suit  in  equity,  and  their  solicitors.  And,  except  in  cases 
where  personal  or  other  notice  is  specially  required  or  directed, 
such  entry  in  the  order-book  shall  be  deemed  sufficient  notice 
to  the  parties  and  their  solicitors,  without  further  service 
thereof,  of  all  orders,  rules,  acts,  notices,  and  other  proceed- 
ings entered  in  such  order-book,  touching  any  and  all  the 
matters  in  the  suits  to  and  in  which  they  are  parties  and  solic- 
itors. And  notice  to  the  solicitors  shall  be  deemed  notice  to 
the  parties  for  whom  they  appear  and  whom  they  represent, 
in  all  cases  where  personal  notice  on  the  parties  is  not  other- 
wise specially  required.  Where  the  solicitors  for  all  the 
parties  in  a  suit  reside  in  or  near  the  same  town  or  city,  the 
judges  of  the  circuit  court  may,  by  rule,  abridge  the  time  for 
notice  of  rules,  orders,  or  other  proceedings  not  requiring  per- 
sonal service  on  the  parties,  in  their  discretion. 

RULE  5. 

All  motions  and  applications  in  the  clerk's  office  for  the 
issuing  of  mesne  process  and  final  process  to  enforce  and  ex- 
ecute decrees,  for  filing  bills,  answers,  pleas,  demurrers,  and 
other  pleadings  ;  for  making  amendments  to  bills  and  answers  ; 
for  taking  bills  pro  confesso ;  for  filing  exceptions,  and  for 
other  proceedings  in  the  clerk's  office  which  do  not,  by  the 


648  EQUITY   EULES. 

rales  hereinafter  prescribed,  require  any  allowance  or  order  of 
the  court,  or  of  any  judge  thereof,  shall  be  deemed  motions 
and  applications,  grantable  of  course  by  the  clerk  of  the  court. 
But  the  same  may  be  suspended,  or  altered,  or  rescinded  by 
any  judge  of  the  court,  upon  special  cause  shown. 

RULE  6. 

All  motions  for  rules  or  orders  and  other  proceedings,  which 
are  not  grantable  of  course,  or  without  notice,  shall,  unless  a 
different  time  be  assigned  by  a  judge  of  the  court,  be  made  on 
a  rule-day,  and  entered  in  the  order-book,  and  shall  be  heard 
at  the  rule-day  next  after  that  on  which  the  motion  is  made. 
And  if  the  adverse  party,  or  his  solicitor,  shall  not  then  ap- 
pear, or  shall  not  show  good  cause  against  the  same,  the  motion 
may  be  heard  by  any  judge  of  the  court  ex  parte,  and  granted, 
as  if  not  objected  to,  or  refused,  iu  his  discretion. 

Process. 

RULE  7. 

The  process  of  subpoena  shall  constitute  the  proper  mjsne 
process  in  all  suits  in  equity,  in  the  first  instance,  to  require 
the  defendant  to  appear  and  answer  the  exigency  of  the  bill  ; 
and,  unless  otherwise  provided  in  these  rules,  or  specially  or- 
dered by  the  circuit  court,  a  writ  of  attachment,  and  if  the  de- 
fendant cannot  be  found,  a  writ  of  sequestration,  or  a  writ  of 
assistance  to  enforce  a  delivery  of  possession,  as  the  case  may 
require,  shall  be  the  proper  process  to  issue  for  the  purpose  of 
compelling  obedience  to  any  interlocutory  or  final  order  or 
decree  of  the  court. 

RULE  8. 

Final  process  to  execute  any  decree  may,  if  the  decree  be 
solely  for  the  payment  of  money,  be  by  a  writ  of  execution, 
in  the  form  used  in  the  circuit  court  in  suits  at  common  law 
in  actions  of  assumpsit.  If  the  decree  be  for  the  performance 
of  any  specific  act,  as,  for  example,  for  the  execution  of  a 
conveyance  of  land  or  the  delivering  up  of  deeds,  or  other 


EQUITY   KULES.  649 

documents,  the  decree  shall,  in  all  cases,  prescribe  the  time 
within  which  the  act  shall  be  done,  of  which  the  defendant 
shall  be  bound  without  further  service  to  take  notice  ;  and 
upon  affidavit  of  the  plaintiff,  filed  in  the  clerk's  office,  that 
the  same  has  not  been  complied  with  within  the  prescribed 
time,  the  clerk  shall  issue  a  writ  of  attachment  against  the  de- 
linquent party,  from  which,  if  attached  thereon,  he  shall  not 
be  discharged,  unless  upon  a  full  compliance  with  the  decree 
and  the  payment  of  all  costs,  or  upon  a  special  order  of  the 
court  or  of  a  judge  thereof,  upon  motion  and  affidavit,  enlarg- 
ing the  time  for  the  performance  thereof.  If  the  delinquent 
party  cannot  be  found,  a  writ  of  sequestration  shall  issue 
against  his  estate  upon  the  return  of  non  est  inventus,  to  com- 
pel obedience  to  the  decree. 

RULE  9. 

When  any  decree  or  order  is  for  the  delivery  of  possession 
upon  proof  made  by  affidavit  of  a  demand  and  refusal  to  obey 
the  decree  or  order,  the  party  prosecuting  the  same  shall  be 
entitled  to  a  writ  of  assistance  from  the  clerk  of  the  court. 

RULE  10. 

Every  person,  not  being  a  party  in  any  cause,  who  has  ob- 
tained an  order,  or  in  whose  favor  an  order  shall  have  been 
made,  shall  be  enabled  to  enforce  obedience  to  such  order  by 
the  same  process  as  if  he  were  a  party  to  the  cause  ;  and  every 
person,  not  being  a  party  in  any  cause,  against  whom  obedience 
to  any  order  of  the  court  may  be  enforced,  shall  be  liable  to  the 
same  process  for  enforcing  obedience  to  such  order  as  if  he 
were  a  party  in  the  cause. 

Service   of  Process. 

RULE  11. 

No  process  of  subpoena  shall  issue  from  the  clerk's  office  in 
any  suit  in  equity  until  the  bill  is  filed  in  the  office. 


650  EQUITY  KULE8. 

KULE  12. 

Whenever  a  bill  is  filed  the  clerk  shall  issue  the  process  of 
subpoena  thereon,  as  of  course,  upon  the  application  of  the 
plaintiff,  which  shall  be  returnable  into  the  clerk's  office  the 
next  rule-day,  or  the  next  rule-day  but  one,  at  the  election  of 
the  plaintiff,  occurring  after  twenty  days  from  the  time  of  the 
issuing  thereof.  At  the  bottom  of  the  subpoena  shall  be 
placed  a  memorandum,  that  the  defendant  is  to  enter  his  ap- 
pearance in  the  suit  in  the  clerk's  office  on  or  before  the  day 
at  which  the  writ  is  returnable  ;  otherwise,  the  bill  may  be 
taken  pro  confesso.  Where  there  are  more  than  one  defendant, 
a  writ  of  subpoena  may,  at  the  election  of  the  plaintiff,  be  sued 
out  separately  for  each  defendant,  except  in  the  case  of  husband 
and  wife  defendants,  or  a  joint  subpoena  against  all  the  de- 
fendants. 

RULE  13. 

The  service  of  all  subpoenas  shall  be  by  a  delivery  of  a  copy 
thereof,  by  the  officer  serving  the  same,  to  the  defendant  per- 
sonally, or  by  leaving  a  copy  thereof  at  the  dwelling-house  or 
usual  place  of  abode  of  each  defendant,  with  some  adult  person 
who  is  a  member  or  resident  in  the  family. 

RULE  14. 

Whenever  any  subpoena  shall  be  returned  not  executed  as  to 
any  defendant,  the  plaintiff  shall  be  entitled  to  another  sub- 
poena, toties  quoties,  against  such  defendant,  if  he  shall  require 
it,  until  due  service  is  made. 

RULE  15. 

The  service  of  all  process,  mesne  and  final,  shall  be  by  the 
marshal  of  the  district,  or  his  deputy,  or  by  some  other  person 
specially  appointed  by  the  court  for  that  purpose,  and  not 
otherwise.  In  the  latter  case,  the  person  serving  the  process 
shall  make  affidavit  thereof. 


EQUITY  EULE8.  651 

KULE  16. 

Upon  the  return  of  the  subpoena  as  served  and  executed  upon 
any  defendant,  the  clerk  shall  enter  the  suit  upon  his  docket 
as  pending  in  the  court,  and  shall  state  the  time  of  the  entry. 

Appearance. 

KULE  17. 

The  appearance-day  of  the  defendant  shall  be  the  rule-day 
to  which  the  subposna  is  made  returnable,  provided  he  has  been 
served  with  the  process  twenty  days  before  that  day  ;  otherwise, 
his  appearance- day  shall  be  the  next  rule-day  succeeding  the 
rule-day  when  the  process  is  returnable.  The  appearance  of 
the  defendant,  either  personally  or  by  his  solicitor,  shall  be 
entered  in  the  order-book  on  the  day  thereof  bj  the  clerk. 

Bills  Taken  Pro  Confesso. 

RULE  18. 

It  shall  be  the  duty  of  the  defendant,  unless  the  time  shall 
be  otherwise  enlarged,  for  cause  shown,  by  a  judge  of  the 
court,  upon  motion  for  that  purpose,  to  file  his  plea,  demurrer, 
or  answer  to  the  bill,  in  the  clerk's  office,  on  the  rule- day  next 
succeeding  that  of  entering  his  appearance.  In  default  thereof, 
the  plaintiff  may,  at  his  election,  enter  an  order  (as  of  course) 
in  the  order-book,  that  the  bill  be  taken  pro  confesso  ; 
and  thereupon  the  cause  shall  be  proceeded  \nexparte,  and  the 
matter  of  the  bill  may  be  decreed  by  the  court  at  any  time 
after  the  expiration  of  thirty  days  from  and  after  the  entry 
of  said  order,  if  the  same  can  be  done  without  an  answer,  and 
is  proper  to  be  decreed  ;  or  the  plaintiff,  if  he  requires  any 
discovery  or  answer  to  enable  him  to  obtain  a  proper  decree, 
shall  be  entitled  to  process  of  attachment  against  the  defendant, 
to  compel  an  answer,  and  the  defendant  shall  not,  when  arrest- 
ed upon  such  process,  be  discharged  therefrom,  unless  upon 
filing  his  answer,  or  otherwise  complying  with  such  order  as 
the  court  or  a  judge  thereof  may  direct,  as  to  pleading  to  or 


652  EQUITY   RULES. 

fully  answering  the  bill,  within  a  period  to  be  fixed  by  the 
court  or  judge,  and  undertaking  to  speed  the  cause. 

RULE  19. 

"When  the  bill  is  taken  pro  confesso,  the  court  may  proceed 
to  a  decree  at  any  time  after  the  expiration  of  thirty  days  from 
and  after  the  entry  of  the  order  to  take  the  bill  pro  confesso, 
and  such  decree  rendered  shall  be  deemed  absolute,  unless  the 
court  shall,  at  the  same  term,  set  aside  the  same,  or  enlarge 
the  time  for  filing  the  answer,  upon  cause  shown  upon  motion 
and  affidavit  of  the  defendant.  And  no  such  motion  shall  be 
granted,  unless  upon  the  payment  of  the  costs  of  the  plaintiff 
in  the  suit  up  to  that  time,  or  such  part  thereof  as  the  court 
shall  deem  reasonable,  and  unless  the  defendant  shall  undertake 
to  file  his  answer  within  such  time  as  the  court  shall  direct, 
and  submit  to  such  other  terms  as  the  court  shall  direct,  for 
the  purpose  of  speeding  the  cause. 

Frame  of  Bills. 

RULE  20. 

Every  bill,  in  the  introductory  part  thereof,  shall  contain  the 
names,  places  of  abode,  and  citizenship  of  all  the  parties,  plain- 
tiffs and  defendants,  by  and  against  whom  the  bill  is  brought. 
The  form,  in  substance,  shall  be  as  follows  :  "  To  the  judges 
of  the  circuit  court  of  the  United  States  for  the  district 

of :  A.   B. ,  of  ,  and  a  citizen  of  the  State  of 

,  brings  this  his  bill  against  C.  D.,  of ,  and  a  citizen 

of  the  State  of ,  and  E.  F. ,  of ,  and  a  citizen 

of  the  State  of .     And  thereupon  your  orator  com- 
plains and  says,  that,"  &c. 

RULE  21. 

The  plaintiff,  in  his  bill,  shall  be  at  liberty  to  omit,  at  his 
option,  the  part  which  is  usually  called  the  common  con- 
federacy clause  of  the  bill,  averring  a  confederacy  between  the 
defendants  to  injure  or  defraud  the  plaintiff  ;  also  what  is 
commonly  called  the  charging  part  of  the  bill,  setting  forth 


EQUITY    RULE8.  653 

the  matters  or  excuses  which  the  defendant  is  supposed  to  in- 
tend to  set  up  by  way  of  defence  to  the  bill  ;  also  what  is  com- 
monly called  the  jurisdiction  clause  of  the  bill,  that  the  acts 
complained  of  are  contrary  to  equity,  and  the  defendant 
is  without  any  remedy  at  law ;  and  the  bill  shall  not  be 
demurrable  therefor.  And  the  plaintiff  may,  in  the  narrative 
or  stating  part  of  his  bill,  state  and  avoid,  by  counter-averments, 
at  his  option,  any  matter  or  thing  which  he  supposes  will  be 
insisted  upon  by  the  defendant,  by  way  of  defence  or  excuse, 
to  the  case  made  by  the  plaintiff  for  relief.  The  prayer  of  the 
bill  shall  ask  the  special  relief  to  which  the  plaintiff  supposes 
himself  entitled,  and  also  shall  contain  a  prayer  for  general 
relief  ;  and  if  an  injunction,  or  a  writ  of  ne  exeat  regno  or  any 
other  special  order  pending  the  suit,  is  required,  it  shall  also 
be  specially  asked  for. 

RULE  22. 

If  any  persons,  other  than  those  named  as  defendants  in  the 
bill,  shall  appear  to  be  necessary  or  proper  parties  thereto,  the 
bill  shall  aver  the  reason  why  they  are  not  made  parties,  by 
showing  them  to  be  without  the  jurisdiction  of  the  court,  or 
that  they  cannot  be  joined  without  ousting  the  jurisdiction  of 
the  court  as  to  the  other  parties.  And  as  to  persons  who  are 
without  the  jurisdiction  and  may  properly  be  made  parties,  the 
bill  may  pray  that  process  may  issue  to  make  them  parties  to 
the  bill  if  they  should  come  within  the  jurisdiction. 

KULE  23. 

The  prayer  for  process  of  subpoena  in  the  bill  shall  contain 
the  names  of  all  the  defendants  named  in  the  introductory  part 
of  the  bill,  and  if  any  of  them  are  known  to  be  infants  under  age, 
or  otherwise  under  guardianship,  shall  state  the  fact,  so  that  the 
court  may  take  order  thereon  as  justice  may  require,  upon  the 
return  of  the  process.  If  an  injunction,  or  a  writ  of  ne  exeat 
regno  or  any  other  special  order  pending  the  suit,  is  asked  for 
in  the  prayer  for  relief,  that  shall  be  sufficient  without  repeat- 
ing the  same  in  the  prayer  for  process. 


654:  EQUITY  RULES. 

RULE  24. 

Every  bill  shall  contain  the  signature  of  counsel  annexed  to 
it,  which  shall  be  considered  as  an  affirmation  on  his  part  that 
upon  the  instructions  given  to  him  and  the  case  laid  before 
him,  there  is  good  ground  for  the  suit,  in  the  manner  in  which 
it  is  framed. 

RULE  25. 

In  order  to  prevent  unnecessary  costs  and  expenses,  and  to 
promote  brevity,  succinctness,  and  directness  in  the  allegations 
of  bills  and  answers,  the  regular  taxable  costs  for  every  bill  and 
answer  shall  in  no  case  exceed  the  sum  which  is  allowed  in  the 
State  court  of  chancery  in  the  district,  if  any  there  be  ;  but  if 
there  be  none,  then  it  shall  not  exceed  the  sum  of  three  dollars 
for  every  bill  or  answer. 

Scandal  and  Impertinence  in  Bitts. 
RULE  26. 

Every  bill  shall  be  expressed  in  as  brief  and  succinct  terms 
as  it  reasonably  can  be,  and  shall  contain  no  unnecessary  re- 
citals of  deeds,  documents,  contracts,  or  other  instruments,  in 
h(KC  verba,  or  any  other  impertinent  matter,  or  any  scandalous 
matter  not  relevant  to  the  suit.  If  it  does,  it  may  on  excep- 
tions be  referred  to  a  master  by  any  judge  of  the  court  for  im- 
pertinence or  scandal  ;  and  if  so  found  by  him,  the  matter 
shall  be  expunged  at  the  expense  of  the  plaintiff,  and  he  shall 
pay  to  the  defendant  all  his  costs  in  the  suit  up  to  that  time, 
unless  the  court  or  a  judge  thereof  shall  otherwise  order.  If 
the  master  shall  report  that  the  bill  is  not  scandalous  or  imper- 
tinent, the  plaintiff  shall  be  entitled  to  all  cost  occasioned  by 
the  reference. 

RULE  27. 

No  order  shall  be  made  by  any  judge  for  referring  any  bill, 
answer,  or  pleading,  or  other  matter  or  proceeding  depending 
before  the  court  for  scandal  or  impertinence,  unless  exceptions 
are  taken  in  writing  and  signed  by  counsel,  describing  the  par- 


EQUITY    RULES.  655 

ticular  passages  which  are  considered  to  be  scandalous  or  im- 
pertinent ;  nor  unless  the  exceptions  shall  be  filed  on  or  before 
the  next  rule-day  after  the  process  on  the  bill  shall  be  return- 
able, or  after  the  answer  or  pleading  is  filed.  And  such  order, 
when  obtained,  shall  be  considered  as  abandoned,  unless  the 
party  obtaining  the  order  shall,  without  any  unnecessary  delay, 
procure  the  master  to  examine  and  report  for  the  same  on  or 
before  the  next  succeeding  rule-day,  or  the  master  shall  certi- 
fy that  further  time  is  necessary  for  him  to  complete  the  ex- 
amination. 

Amendment    of  Bills. 

RULE  28. 

The  plaintiff  shall  be  at  liberty,  as  a  matter  of  course,  and 
without  payment  of  costs,  to  amend  his  bill  in  any  matters 
whatsoever,  before  any  copy  has  been  taken  out  of  the  clerk's 
office,  and  in  any  small  matters  afterward,  such  as  filling  blanks, 
correcting  errors  of  dates,  misnomer  of  parties,  misdescription 
of  premises,  clerical  errors,  and  generally  in  matters  of  form. 
But  if  he  amend  in  a  material  point  (as  he  may  do  of  course), 
after  a  copy  has  been  so  taken,  before  any  answer,  or  plea,  or 
demurrer  to  the  bill,  he  shall  pay  to  the  defendant  the  costs 
occasioned  thereby,  and  shall,  without  delay,  furnish  him  a  fair 
copy  thereof  free  of  expense,  with  suitable  references  to  the 
places  where  the  same  are  to  be  inserted.  And  if  the  amend- 
ments are  numerous,  he  shall  furnish  in  like  manner,  to  the 
defendant,  a  copy  of  the  whole  bill  as  amended  ;  and  if  there 
be  more  than  one  defendant,  a  copy  shall  be  furnished  to  each 
defendant  affected  thereby. 

RULE  29. 

After  an  answer,  or  plea,  or  demurrer  is  put  in,  and  before 
replication,  the  plaintiff  may,  upon  motion  or  petition,  with- 
out notice,  obtain  an  order  from  any  judge  of  the  court  to 
amend  his  bill  on  or  before  the  next  succeeding  rule-day,  upon 
payment  of  costs  or  without  payment  of  costs,  as  the  court  or 
a  judge  thereof  may  in  his  discretion  direct.  But  after  repli- 


656  EQUITY    RULES. 

cation  filed,  the  plaintiff  shall  not  be  permitted  to  withdraw  it 
and  to  amend  his  bill,  except  upon  a  special  order  of  a  judge 
of  the  court,  upon  motion  or  petition,  after  due  notice  to  the 
other  party,  and  upon  proof  by  affidavit  that  the  same  is  not 
made  for  the  purpose  of  vexation  or  delay,  or  that  the  matter 
of  the  proposed  amendment  is  material,  and  could  not  with 
reasonable  diligence  have  been  sooner  introduced  into  the  bill, 
and  upon  the  plaintiff's  submitting  to  such  other  terms  as  may . 
be  imposed  by  the  judge  for  speeding  the  cause. 

RULE  30. 

If  the  plaintiff,  so  obtaining  an  order  to  amend  his  bill  after 
answer,  or  plea,  or  demurrer,  or  after  replication,  shall  not  file 
his  amendments  or  amended  bill,  as  the  case  may  require,  in 
the  clerk's  office,  on  or  before  the  next  succeeding  rule-day, 
he  shall  be  considered  to  have  abandoned  the  same,  and  the 
cause  shall  proceed  as  if  no  application  for  any  amendment  had 
been  made, 

Demurrers    and   Pleas. 
RULE   31. 

No  demurrer  or  plea  shall  be  allowed  to  be  filed  to  any  bill, 
unless  upon  a  certificate  of  counsel  that  in  his  opinion  it  is  well 
founded  in  point  of  law,  and  supported  by  the  affidavit  of  the 
defendant  that  it  is  not  interposed  for  delay  ;  and  if  a  plea,  that 
it  is  true  in  point  of  fact. 

RULE    32. 

The  defendant  may,  at  any  time  before  the  bill  is  taken  for 
confessed,  or  afterward  with  the  leave  of  the  court,  demur  or 
plead  to  the  whole  bill,  or  to  part  of  it,  and  he  may  demur  to 
part,  plead  to  part,  and  answer  as  to  the  residue  ;  but  in  every 
case  in  which  the  bill  especially  charges  fraud  or  combination, 
a  plea  to  such  part  must  be  accompanied  with  an  answer  forti- 
fying the  plea,  and  explicitly  denying  the  fraud  and  combina- 
tion, and  the  facts  on  which  the  charge  is  founded. 


EQUITY  RULES.  657 

RULE  33. 

The  plaintiff  may  set  down  the  demurrer  or  plea  to  be  argued, 
or  he  may  take  issue  on  the  plea.  If,  upon  an  issue,  the  facts 
stated  in  the  plea  be  determined  for  the  defendant,  they  shall 
avail  him  as  far  as  in  law  and  equity  they  ought  to  avail  him. 

RULE  34. 

If,  upon  the  hearing,  any  demurrer  or  plea  is  overruled,  the 
plaintiff  shall  be  entitled  to  his  costs  in  the  cause  up  to  that 
period,  unless  the  court  shall  be  satisfied  that  the  defendant  had 
good  ground  in  point  of  law  or  fact  to  interpose  the  same,  and 
it  was  not  interposed  vexatiously  or  for  delay.  And  upon  the 
overruling  of  any  plea  or  demurrer,  the  defendant  shall  be  as- 
signed to  answer  the  bill,  or  so  much  thereof  as  is  covered  by 
the  plea  or  demurrer,  the  next  succeeding  rule-day,  or  at  such 
other  period  as,  consistently  with  justice  and  the  rights  of  the  de- 
fendant, the  same  can,  in  the  judgment  of  the  court,  be  reason- 
ably done  ;  in  default  whereof,  the  bill  shall  be  taken  against  him, 
pro  confesso,  and  the  matter  thereof  proceeded  in  and  decreed 
accordingly. 

RULE  35. 

If,  upon  the  hearing,  any  demurrer  or  plea  shall  be  allowed, 
the  defendant  shall  be  entitled  to  his  costs.  But  the  court  may, 
in  its  discretion,  upon  motion  of  the  plaintiff,  allow  him  to 
amend  his  bill  upon  such  terms  as  it  shall  deem  reasonable. 

RULE  36. 

No  demurrrer  or  plea  shall  be  held  bad  and  overruled  upon 
argument,  only  because  such  demurrer  or  plea  shall  not  cover 
so  much  of  the  bill  as  it  might  by  law  have  extended  to; 

RULE  37. 

No  demurrer  or  plea  shall  be  held  bad  and  overruled  upon 
argument,  only  because  the  answer  of  the  defendant  may  extend 
to  some  part  of  the  same  matter  as  may  be  covered  by  such 
demurrer  or  plea. 


658  EQUITY  RULES. 

KULE   38. 

If  the  plaintiff  shall  not  reply  to  any  plea,  or  set  down  any 
plea  or  demurrer  for  argument,  on  the  rule-day  when  the  same 
is  filed,  or  on  the  next  succeeding  rule-day,  he  shall  be  deemed 
to  admit  the  truth  aud  sufficiency  thereof,  and  his  bill  shall  be 
dismissed  as  of  course,  unless  a  judge  of  the  court  shall  allow 
him  further  time  for  the  purpose. 

Answers. 
*.  KULE   39. 

The  rule,  that  if  a  defendant  submits  to  answer  he  shall  answer 
fully  to  all  the  matters  of  the  bill,  shall  no  longer  apply  in 
cases  where  he  might  by  plea  protect  himself  from  such 
answer  and  discovery.  And  the  defendant  shall  be  entitled  in 
all  cases  by  answer  to  insist  upon  all  matters  of  defence  (not 
being  matters  of  abatement,  or  to  the  character  of  the  parties, 
or  matters  of  form)  in  bar  of  or  to  the  merits  of  the  bill,  of 
which  he  may  be  entitled  to  avail  himself  by  a  plea  in  bar ; 
and  in  such  answer  he  shall  not  be  compellable  to  answer  any 
other  matters  than  he  would  be  compellable  to  answer  and  dis- 
cover upon  filing  a  plea  in  bar,  and  an  answer  in  support  of 
such  plea,  touching  the  matters  set  forth  in  the  bill,  to  avoid 
or  repel  the  bar  or  defence.  Thus,  for  example,  a  bona  fide 
purchaser  for  a  valuable  consideration,  without  notice,  may  set 
up  that  defence  by  way  of  answer  instead  of  plea,  and  shall  be 
entitled  to  the  same  protection,  and  shall  not  be  compellable  to 
make  any  further  answer  or  discovery  of  his  title  than  he  would 
be  in  any  answer  in  support  of  such  plea. 

RULE  4-0. 

It  shall  not  hereafter  be  necessary  to  interrogate  a  defendant 
specially  and  particularly  upon  any  statement  in  the  bill,  unless 
the  complainant  desires  to  do  so,  to  obtain  a  discovery. 

RULE   41. 

The  interrogatories  contained  in  the  interrogating  part  of  the 
bill  shall  be  divided  as  conveniently  as  may  be  from  each  other, 


EQUITY    RULES.  659 

and  numbered  consecutively  1,  2,  3,  &c.  ;  and  the  interroga- 
tories which  each  defendant  is  required  to  answer  shall  be  speci- 
fied in  a  note  at  the  foot  of  the  bill,  in  the  form  or  to  the 
effect  following,  that  is  to  say:  ''The  defendant  (A.  B.)  is 
required  to  answer  the  interrogatories  numbered  respectively 
1,  2,  3,  &c. ;"  and  the  office  copy  of  the  bill  taken  by  each 
defendant  shall  not  contain  any  interrogatories  except  those 
which  such  defendant  is  so  required  to  answer,  unless  such  de- 
fendant shall  require  to  be  furnished  with  a  copy  of  the  whole 
bill. 

If  the  complainant,  in  his  bill,  shall  waive  an  answer  under 
oath,  or  shall  only  require  an  answer  under  oath  with  regard  to 
certain  specified  interrogatories,  the  answer  of  the  defendant, 
though  under  oath,  except  such  part  thereof  as  shall  be  directly 
responsive  to  such  interrogatories,  shall  not  be  evidence  in  his 
favor,  unless  the  cause  be  set  down  for  hearing  on  bill  and 
answer  only  ;  but  may  nevertheless  be  used  as  an  affidavit,  with 
the  same  effect  as  heretofore,  on  a  motion  to  grant  or  dissolve  an 
injunction,  or  on  any  other  incidental  motion  in  the  cause  ; 
but  this  shall  not  prevent  a  defendant  from  becoming  a  witness 
in  his  own  behalf  under  section  3  of  the  act  of  Congress  of 
July  2d,  1864. 

RULE  42. 

The  note  at  the  foot  of  the  bill,  specifying  the  interrogato- 
ries which  each  defendant  is  required  to  answer,  shall  be  con- 
sidered and  treated  as  part  of  the  bill,  and  the  addition  of  any 
such  note  to  the  bill,  or  any  alteration  in  or  addition  to  such 
note  after  the  bill  is  filed,  shall  be  considered  and  treated  as  an 
amendment  of  the  bill. 

RULE  43. 

Instead  of  the  words  of  the  bill  now  in  use,  preceding  tho 
interrogating  part  thereof,  and  beginning  with  the  words  "  To 
the  end  therefore,"  there  shall  hereafter  be  used  words  in  the 
form  or  to  the  effect  following  :  "To  the  end,  therefore,  that 
the  said  defendants  may,  if  they  .can,  show  why  your  orator 
should  not  have  the  relief  hereby  prayed,  and  may,  upon  their 


660  EQUITY    RULES. 

several  and  respective  corporal  oaths,  and  according  to  the  best 
and  utmost  of  their  several  and  respective  knowledge,  remem- 
brance, information,  and  belief,  full,  true,  direct,  and  perfect 
answer  make  to  such  of  the  several  interrogatories  hereinafter 
numbered  and  set  forth,  as  by  the  note  hereunder  written  they 
are  respectively  required  to  answer  ;  that  is  to  say — 

44 1.  Whether,  &c. 

"2.  Whether,  &c." 

RULE  44. 

A  defendant  shall  be  at  liberty,  by  answer,  to  decline  answer- 
ing any  interrogatory,  or  part  of  an  interrogatory,  from  answer- 
ing which  he  might  have  protected  himself  by  demurrer ;  and 
he  shall  be  at  liberty  so  to  decline,  notwithstanding  he  shall 
answer  other  parts  of  the  bill,  from  which  he  might  have  pro- 
tected himself  by  demurrer. 

RULE  45. 

No  special  replication  to  any  answer  shall  be  filed.  But  if 
any  matter  alleged  in  the  answer  shall  make  it  necessary  for 
the  plaintiff  to  amend  his  bill,  he  may  have  leave  to  amend 
the  same,  with  or  without  the  payment  of  costs,  as  the  court, 
or  a  judge  thereof,  may  in  his  discretion  direct. 

RULE  46. 

In  every  case  where  an  amendment  shall  be  made  after 
answer  filed,  the  defendant  shall  put  in  a  new  or  supplemental 
answer,  on  or  before  the  next  succeeding  rule-day  after  that  on 
which  the  amendment  or  amended  bill  is  filed,  unless  the  time 
is  enlarged  or  otherwise  ordered  by  a  judge  of  the  court ;  and 
upon  his  default  the  like  proceedings  may  be  had  as  in  cases  of 
an  omission  to  put  in  an  answer. 

Parties  to  Bills. 
RULE  47. 

In  all  cases  where  it  shall  .appear  to  the  court  that  persons, 
who  might  otherwise  be  deemed  necessary  or  proper  parties  to 


EQUITY    HULKS.  661 

the  suit,  cannot  be  made  parties  by  reason  of  their  being  out 
of  the  jurisdiction  of  the  court,  or  incapable  otherwise  of  being 
made  parties,  or  because  their  joinder  would  oust  the  jurisdic- 
tion of  the  court  as  to  the  parties  before  the  court,  the  court 
may  in  their  discretion  proceed  in  the  cause  without  making 
such  persons  parties  ;  and  in  such  cases  the  decree  shall  be 
without  prejudice  to  the  rights  of  the  absent  parties. 

RULE  48. 

Where  the  parties  on  either  side  are  very  numerous,  and 
cannot,  without  manifest  inconvenience  and  oppressive  delays 
in  the  suit,  be  all  brought  before  it,  the  court  in  its  discretion 
may  dispense  with  making  all  of  them  parties,  and  may  pro- 
ceed in  the  suit,  having  sufficient  parties  before  it  to  represent 
all  the  adverse  interests  of  the  plaintiffs  and  the  defendants  in 
the  suit  properly  before  it.  But  in  such  cases  the  decree  shall 
be  without  prejudice  to  the  rights  and  claims  of  all  the  absent 
parties. 

RULE  49. 

In  all  suits  concerning  real  estate,  which  is  vested  in  trustees 
by  devise,  and  such  trustees  are  competent  to  sell  and  give  dis- 
charges for  the  proceeds  of  the  sale,  and  for  the  rents  and 
profits  of  the  estate,  such  trustees  shall  represent  the  persons 
beneficially  interested  in  the  estate,  or  the  proceeds,  or  the 
rents  and  profits,  in  the  same  manner,  and  to  the  same  extent, 
as  the  executors  or  administrators  in  suits  concerning  personal 
estate  represent  the  persons  beneficially  interested  in  such  per- 
sonal estate  ;  and  in  such  cases  it  shall  not  be  necessary  to  make 
the  persons  beneficially  interested  in  such  real  estate,  or  rents 
and  profits,  parties  to  the  suit ;  but  the  court  may,  upon  consider- 
ation of  the  matter  on  the  hearing,  if  it  shall  so  think  tit,  order 
such  persons  to  be  made  parties. 

RULE  50. 

In  suits  to  execute  the  trusts  of  a  will,  it  shall  not  be  neces- 
sary to  make  the  heir-at-law  a  party  ;  but  the  plaintff  shall  be  at 
liberty  to  make  the  heir-at-law  a  party  where  he  desires  to  have 
the  will  established  against  him. 


662  EQUITY  RULES. 

RULE  51. 

In  all  cases  in  which  the  plaintiff  has  a  joint  and  several 
demand  against  several  persons,  either  as  principals  or  sureties, 
it  shall  not  be  necessary  to  bring  before  the  court,  as  parties  to 
a  snit  concerning  such  demand,  all  the  persons  liable  thereto 
but  the  plaintiff  may  proceed  against  one  or  more  of  the  persons 
severally  liable. 

RULE  52. 

Where  the  defendant  shall,  by  his  answer,  suggest  that  the 
bill  is  defective  for  want  of  parties,  the  plaintiff  shall  be  at 
liberty,  within  fourteen  days  after  answer  filed,  to  set  down  the 
cause  for  argument  upon  that  objection  only  ;  and  the  purpose 
for  which  the  same  is  so  set  down  shall  be  notified  by  an  entry, 
to  be  made  in  the  clerk's  order-book,  in  the  form  or  to  the 
effect  following,  that  is  to  say  :  "  Set  down  upon  the  defend- 
ant's objection  for  want  of  parties."  And  where  the  plain- 
tiff shall  not  so  set  down  his  cause,  but  shall  proceed  therewith 
to  a  hearing,  notwithstanding  an  objection  for  want  of  parties 
taken  by  the  answer,  he  shall  not,  at  the  hearing  of  the  cause,  if 
the  defendant's  objections  shall  then  be  allowed,  be  entitled  as 
of  course  to  an  order  for  liberty  to  amend  his  bill  by  adding 
parties.  But  the  court,  if  it  thinks  fit,  shall  be  at  liberty  to 
dismiss  the  bill. 

RULE  53. 

If  a  defendant  shall,  at  the  hearing  of  a  cause,  object  that  a 
suit  is  defective  for  want  of  parties  not  having  by  plea  or  answer 
.taken  the  objection,  and  therein  specified  by  name  or  de- 
scription the  parties  to  whom  the  objection  applies,  the  court 
(if  it  shall  think  fit)  shall  be  at  liberty  to  make  a  decree  saving 
the  rights  of  the  absent  parties. 

Nominal  Parties  to  Bills. 
RULE  54. 

Where  no  account,  payment,  conveyance,  or  other  direct 
relief  is  sought  against  a  party  to  a  suit,  not  being  an  infant, 


EQUITY   RULES.  663 

the  party,  upon  service  of  the  subpoena  upon  him,  need  not 
appear  and  answer  the  bill,  unless  the  plaintiff  specially  re- 
quires him  so  to  do  by  the  prayer  of  his  bill  ;  but  he  may 
appear  and  answer,  at  his  option  ;  and  if  he  does  not  appear  and 
answer  he  shall  be  bound  by  all  the  proceedings  in  the  cause. 
If  the  plaintiff  shall  require  him  to  appear  and  answer,  he  shall 
be  entitled  to  the  costs  of  all  the  proceedings  against  him, 
unless  the  court  shall  otherwise  direct. 

RULE  55. 

Whenever  an  injunction  is  asked  for  by  the  bill  to  stay  pro- 
ceedings at  law,  if  the  defendant  do  not  enter  his  appearance  and 
plead,  demur,  or  answer  to  the  same  within  the  time  prescribed 
therefor  by  these  rules,  the  plaintiff  shall  be  entitled  as  of 
course,  upon  motion  without  notice,  to  such  injunction.  But 
special  injunctions  shall  be  grantable  only  upon  due  notice  to 
the  other  party  by  the  court  in  term,  or  by  a  judge  thereof 
in  vacation,  after  a  hearing,  which  may  be  ex-parte,  if  the  ad- 
verse party  does  not  appear  at  the  time  and  place  ordered.  In 
every  case  where  an  injunction,  either  the  common  injunction 
or  a  special  injunction,  is  awarded  in  vacation,  it  shall,  unless 
previously  dissolved  by  the  judge  granting  the  same,  continue 
until  the  next  term  of  the  court,  or  until  it  is  dissolved  by  some 
other  order  of  the  court. 

Bills  of  Hevivor  and  Supplemental  Bills, 
RULE  56. 

Whenever  a  suit  in  equity  shall  become  abated  by  the  death 
of  either  party,  or  by  any  other  event,  the  same  may  be  re- 
vived by  a  bill  of  revivor,  or  a  bill  in  the  nature  of  a  bill  of  re- 
vivor,  as  the  circumstances  of  the  case  may  require,  filed  by 
the  proper  parties  entitled  to  revive  the  same,  which  bill  may  be 
filed  in  the  clerk's  office  at  any  time  ;  and  upon  suggestion  of 
the  facts,  the  proper  process  of  subpoena  shall,  as  of  course,  be 
issued  by  the  clerk,  requiring  the  proper  representatives  of  the 
other  party  to  appear  and  show  cause,  if  any  they  have,  why 
the  cause  should  not  be  revived.  And  if  no  cause  shall  bo 


664  EQUITY   BULKS. 

shown  at  the  next  rule-day  which  shall  occur  after  fourteen 
days  from  the  time  of  the  service  of  the  same  process,  the  suit 
shall  stand  revived,  as  of  course. 

RULE  57. 

!  Whenever  any  suit  in  equity  shall  become  defective,  from 
any  event  happening  after  the  filing  of  the  bill  (as,  for  example, 
by  change  of  interest  in  the  parties),  or  for  any  other  reason, 
a  supplemental  bill,  or  a  bill  in  the  nature  of  a  supplemental 
bill,  may  be  necessary  to  be  filed  in  the  cause,  leave  to  file  the 
same  may  be  granted  by  any  judge  of  the  court  on  any  rule- 
day,  upon  proper  cause  shown,  and  due  notice  to  the  other 
party.  And  if  leave  is  granted  to  file  such  supplemental  bill, 
the  defendant  shall  demur,  plead,  or  answer  thereto,  on  the 
next  succeeding  rule-day  after  the  supplemental  bill  is  filed  in 
the  clerk's  office,  unless  some  other  time  shall  be  assigned  by  a 
judge  of  the  court. 

RULE  58. 

It  shall  not  be  necessary  in  any  bill  of  revivor,  or  supplemen- 
tal bill,  to  set  forth  any  of  the  statements  in  the  original  suit, 
unless  the  special  circumstances  of  the  case  may  require  it, 

Answers. 
RULE  59. 

Every  defendant  may  swear  to  his  answer  before  any  justice 
or  judge  of  any  court  of  the  United  States,  or  before  any  com- 
missioner appointed  by  any  circuit  court  to  take  testimony  or 
depositions,  or  before  any  master  in  chancery  appointed  by  any 
circuit  court,  or  before  any  judge  of  any  court  of  a  State  or 
Territory. 

Amendment  of  Answers. 
RULE  60. 

After  an  answer  is  put  in,  it  may  be  amended  as  of  course, 
in  any  matter  of  form,  or  by  filling  up  a  blank,  or  correcting  a 
date,  or  reference  to  a  document  cr  other  small  matter,  and 


EQUITY   ETJLE8.  665 

be  resworn,  at  any  time  before  a  replication  is  put  in,  or  the 
cause  is  set  down  for  a  bearing  upon  bill  and  answer.  But 
after  replication,  or  sucb  setting  down  far  a  hearing,  it  shall 
not  be  amended  in  any  material  matters,  as  by  adding  new  facts 
or  defences,  or  qualifying  or  altering  the  original  statements, 
except  by  special  leave  of  the  court  or  of  a  judge  thereof, 
upon  motion  and  cause  shown  after  due  notice  to  the  adverse 
party,  supported,  if  required,  by  affidavit.  And  in  every  case 
where  leave  is  so  granted,  the  court,  or  the  judge  granting  the 
same,  may,  in  his  discretion,  require  that  the  same  be  separately 
engrossed,  and  added  as  a  distinct  amendment  to  the  original 
answer,  so  as  to  be  distinguishable  therefrom. 

Exceptions  to  Answers. 
KULE  61. 

After  an  answer  is  filed  on  any  rule-day,  the  plaintiff  shall 
be  allowed  until  the  next  succeeding  rule-day  to  file  in  the  clerk's 
office  exceptions  thereto  for  insufficiency,  and  no  longer,  un- 
less a  longer  time  shall  be  allowed  for  the  purpose,  upon  cause 
shown  to  the  court  or  a  judge  thereof ;  and  if  no  exceptions 
shall  be  filed  thereto  within  that  period,  the  answer  shall  be 
deemed  and  taken  to  be  sufficient. 

KULE  62. 

When  the  same  solicitor  is  employed  for  two  or  more  defend- 
ants, and  separate  answers  shall  be  filed,  or  other  proceedings 
had  by  two  or  more  of  the  defendants  separately,  costs  shall 
not  be  allowed  for  such  separate  answers  or  other  proceedings, 
unless  a  master,  upon  reference  to  him,  shall  certify  that  such 
separate  answers  and  other  proceedings  were  necessary  or  prop- 
er, and  ought  not  to  have  been  joined  together. 

RULE  63. 

Where  exceptions  shall  be  filed  to  the  answer  for  insufficien- 
cy within  the  period  prescribed  by  these  rules,  if  the  defend- 
ant shall  not  submit  to  the  same  and  file  an  amended  answer 
on  the  next  succeeding  rule-day,  the  plaintiff  shall  forthwith 


666  EQUITY   RULES. 

set  them  down  for  a  hearing  on  the  next  succeeding  rule-day 
thereafter  before  a  judge  of  the  court,  and  shall  enter,  as  of 
course,  in  the  order  book,  an  order  for  that  purpose.  And  if 
he  shall  not  so  set  down  the  same  for  a  hearing,  the  exceptions 
shall  be  deemed  abandoned,  and  the  answer  shall  be  deemed 
sufficient ;  provided,  however,  that  the  court,  or  any  judge 
thereof,  may,  for  good  cause  shown,  enlarge  the  time  for  filing 
exceptions,  or  for  answering  the  same,  in  his  discretion,  upon 
such  terms  as  he  may  deem  reasonable. 

RULE  64. 

If,  at  the  hearing  the  exceptions  shall  be  allowed,  the  defend- 
ant shall  be  bound  to  put  in  a  full  and  complete  answer  thereto 
on  the  next  succeeding  rule-day  ;  otherwise  the  plaintiff  shall, 
as  of  course,  be  entitled  to  take  the  bill,  so  far  as  the  matter 
of  such  exceptions  is  concerned,  as  confessed,  or,  at  his  election, 
he  may  have  a  writ  of  attachment  to  compel  the  defendant  to 
make  a  better  answer  to  the  matter  of  the  exceptions  ;  and  the 
defendant,  when  he  is  in  custody  upon  such  writ,  shall  not  be 
discharged  therefrom  but  by  an  order  of  the  court,  or  of  a 
judge  thereof,  upon  his  putting  in  such  answer  and  complying 
with  such  other  terms  as  the  court  or  judge  may  direct. 

RULE  65. 

If,  upon  argument,  the  plaintiff's  exceptions  to  the  answer 
shall  be  overruled,  or  the  answer  shall  be  adjudged  insufficient, 
the  prevailing  party  shall  be  entitled  to  all  the  costs  occasioned 
thereby,  unless  otherwise  directed  by  the  court,  or  the  judge 
thereof,  at  the  hearing  upon  the  exceptions. 

Replication  and  Issue. 
RULE  66. 

"Whenever  the  answer  of  the  defendant  shall  not  be  excepted 
to,  or  shall  be  adjudged  or  deemed  sufficient,  the  plaintiff  shall 
file  the  general  replication  thereto  on  or  before  the  next  suc- 
ceeding rule-day  thereafter  ;  and  in  all  cases  where  the  general 
replication  is  filed  the  cause  shall  be  deemed  to  all  intents  and 


EQUITY   EULE8.  667 

purposes  at  issue,  without  any  rejoinder  or  other  pleading  on 
either  side.  If  the  plaintiff  shall  omit  or  refuse  to  file  such 
replication  within  the  prescribed  period,  the  defendant  shall  be 
entitled  to  an  order,  as  of  course,  for  a  dismissal  of  the  suit ; 
and  the  suit  shall  thereupon  stand  dismissed,  unless  the  court, 
or  a  judge  thereof,  shall,  upon  motion  for  cause  shown,  allow  a 
replication  to  be  filed  nuncpro  tune,  the  plaintiff  submitting  to 
speed  the  cause,  and  to  such  other  terms  as  may  be  directed. 

Testimony — How  Taken. 
KULE  67. 

After  the  cause  is  at  issue,  commissions  to  take  testimony 
may  be  taken  out  in  vacation  as  well  as  in  term,  jointly  by 
both  parties,  or  severally  by  either  party,  upon  interrogatories 
filed  by  the  party  taking  out  the  same  in  the  clerk's  office,  ten 
days'  notice  thereof  being  given  to  the  adverse  party  to  file 
cross-interrogatories  before  the  issuing  of  the  commission  ;  and 
if  no  cross-interrogatories  are  filed  at  the  expiration  of  the  time, 
the  commission  may  issue  ex  parte.  In  all  cases  the  commis- 
sioner or  commissioners  shall  be  named  by  the  court,  or  by  a 
judge  thereof.  And  the  presiding  judge  of  any  court  exercising 
jurisdiction,  either  in  term  time  or  in  vacation,  may  vest  in  the 
clerk  of  said  court  general  power  to  name  commissioners  to 
take  testimony  in  like  manner. 

Either  party  may  give  notice  to  the  other  that  he  desires  the 
evidence  to  be  adduced  in  the  cause  to  be  taken  orally,  and 
thereupon  all  the  witnesses  to  be  examined  shall  be  examined 
before  one  of  the  examiners  of  the  court,  or  before  an  examiner 
to  be  specially  appointed  by  the  court,  the  examiner  to  be  fur- 
nished with  a  copy  of  the  bill  and  answer,  if  any  ;  and  such 
examination  shall  take  place  in  the  presence  of  the  parties  or 
their  agents,  by  their  counsel  or  solicitors,  and  the  witnesses 
shall  be  subject  to  cross-examination,  and  re-examination,  and 
which  shall  be  conducted,  as  near  as  may  be,  in  the  mode  now 
used  in  common-law  courts.  The  depositions  taken  upon  such 
oral  examination  shall  be  taken  down  in  writing  by  the  ex- 
aminer in  the  form  of  narrative,  unless  he  determines  tho 


668  EQUITY   RULES. 

examination  shall  be  by  question  and  answer  in  special  instances  ; 
and  when  completed,  shall  be  read  over  to  the  witness  and 
signed  by  him  in  the  presence  of  the  parties  or  counsel,  or  such 
of  them  as  may  attend  ;  provided,  if  the  witness  shall  refuse 
to  sign  the  said  deposition,  then  the  examiner  shall  sign  the 
same ;  and  the  examiner  may  upon  all  examinations  state 
any  special  matters  to  the  court  as  he  shall  think  fit ;  and  any 
question  or  questions  which  may  be  objected  to  shall  be  noted 
by  the  examiner  upon  the  deposition,  but  he  shall  not  have 
power  to  decide  on  the  competency,  materiality,  or  relevancy 
of  the  questions  ;  and  the  court  shall  have  power  to  deal  with 
the  costs  of  incompetent,  immaterial,  or  irrelevant  depositions, 
or  parts  of  them,  as  may  be  just. 

In  case  of  refusal  of  witnesses  to  attend,  to  be  sworn,  or  to 
answer  any  question  put  by  the  examiner  or  by  counsel  or 
solicitor,  the  same  practice  shall  be  adopted  as  is  now  practised 
with  respect  to  witnesses  to  be  produced  on  examination  be- 
fore an  examiner  of  said  court  on  written  interrogatories. 

Notice  shall  be  given  by  the  respective  counsel  or  solicitors, 
to  the  opposite  counsel  or  solicitors,  or  parties,  of  the  time  and 
place  of  the  examination,  for  such  reasonable  time  as  the 
examiner  may  fix  by  order  in  each  cause. 

When  the  examination  of  witnesses  before  the  examiner  is 
concluded,  the  original  deposition,  authenticated  by  the  signa- 
ture of  the  examiner,  shall  be  transmitted  by  him  to  the  clerk 
of  the  court,  to  be  there  filed  of  record  in  the  same  mode  as 
prescribed  in  the  thirtieth  section  of  act  of  Congress,  September 
24th,  1T89. 

Testimony  may  be  taken  on  commission  in  the  usual  way  by 
written  interrogatories,  and  cross-interrogatories,  on  motion  to 
the  court  in  term  time,  or  to  a  judge  in  vacation,  for  special 
reasons  satisfactory  to  the  court  or  judge. 

Where  the  evidence  to  be  adduced  in  a  cause  is  to  be  taken 
orally,  as  provided  in  the  order  passed  at  the  December  Term, 
1861,  amending  the  67th  General  Rule,  the  court  may,  on 
motion  of  either  party,  assign  a  time  within  which  the  com- 
plainant shall  take  his  evidence  in  support  of  the  bill,  and  a  time 
thereafter  within  which  the  defendant  shall  take  his  evidence 


EQUITY   RULES. 

in  defence,  and  a  time  thereafter  within  which  the  complainant 
shall  take  his  evidence  in  reply  ;  and  no  further  evidence  shall 
be  taken  in  the  cause  unless  by  agreement  of  the  parties,  or  by 
leave  of  court  first  obtained  on  motion  for  cause  shown. 

EULE  68. 

Testimony  may  also  be  taken  in  the  cause,  after  it  is  at  issue, 
by  deposition,  according  to  the  acts  of  Congress.  But  in  such 
case,  if  no  notice  is  given  to  the  adverse  party  of  the  time  and 
place  of  taking  the  deposition,  he  shall,  upon  motion  and  affi- 
davit of  the  fact,  be  entitled  to  a  cross-examination  of  the  wit- 
ness, either  under  a  commission  or  by  a  new  deposition  taken 
under  the  acts  of  Congress,  if  a  court  or  a  judge  thereof  shall, 
under  all  the  circumstances,  deem  it  reasonable. 

RULE  69. 

Three  months,  and  no  more,  shall  be  allowed  for  the  taking 
of  testimony  after  the  cause  is  at  issue,  unless  the  court  or  a 
judge  thereof  shall,  upon  special  cause  shown  by  either  party, 
enlarge  the  time  ;  and  no  testimony  taken  after  such  period 
shall  be  allowed  to  be  read  in  evidence  at  the  hearing.  Im- 
mediately upon  the  return  of  the  commissions  and  depositions, 
containing  the  testimony,  into  the  clerk's  office,  publication 
thereof  may  be  ordered  in  the  clerk's  office,  by  any  judge  of 
the  court,  upon  due  notice  to  the  parties,  or  it  may  be  enlarged, 
as  he  may  deem  reasonable  under  all  the  circumstances.  But, 
by  consent  of  the  parties,  publication  of  the  testimony  may  at 
any  time  pass  in  the  clerk's  office,  such  consent  being  in  writ- 
ing, and  a  copy  thereof  entered  in  the  order-books,  or  indorsed 
upon  the  deposition  or  testimony. 

Testimony  De  Bene  Ease. 
RULE  70. 

After  any  bill  filed,  and  before  the  defendant  hath  answered 
the  same,  upon  affidavit  made  that  any  of  the  plantiff's  wit- 
nesses are  aged  and  infirm,  or  going  out  of  the  country,  or  that 
any  one  of  them  is  a  single  witness  to  a  material  fact,  the  clerk  of 


EQUITY   RULES. 

the  court  shall,  as  of  course,  upon  the  application  of  the  plain- 
tiff, issue  a  commission  to  such  commissioner  or  commis- 
sioners, as  a  judge  of  the  court  may  direct,  to  take  the  exam- 
ination of  such  witness  or  witnesses  de  bene  esse  upon  giving 
due  notice  to  the  adverse  party  of  the  time  and  place  of  taking 
his  testimony. 

Form  of  the  Last  Interrogatory. 
KULE  71. 

The  last  interrogatory  in  the  written  interrogatories  to  take 
testimony  now  commonly  in  use,  shall  in  the  future  be  altered, 
and  stated  in  substance  thus  :  "  Do  you  know,  or  can  you  set 
forth,  any  other  matter  or  thing  which  may  be  a  benefit  or  ad- 
vantage to  the  parties  at  issue  in  this  cause,  or  either  of  them,  or 
that  may  be  material  to  the  subject  of  this  your  examination,  or 
the  matters  in  question  in  this  cause  ?  If  yea,  set  forth  the 
same  fully  and  at  large  in  your  answer." 

Cross-Sill. 
KULE  72. 

Where  a  defendant  in  equity  files  a  cross-bill  for  discovery 
only  against  the  plaintiff  in  the  original  bill,  the  defendant  to 
the  original  bill  shall  first  answer  thereto,  before  the  original 
plaintiff  shall  be  compellable  to  answer  the  cross-bill.  The 
answer  of  the  original  plaintiff  to  such  cross-bill  may  be  read  and 
used  by  the  party  filing  the  cross-bill  at  the  hearing,  in  the  same 
manner  and  under  the  same  restrictions  as  the  answer  praying 
relief  may  now  be  read  and  used. 

Reference  to  and  Proceedings  before  Masters. 
RULE  73. 

Every  decree  for  an  account  of  the  personal  estate  of  a 
testator  or  intestate  shall  contain  a  direction  to  the  master,  to 
whom  it  is  referred  to  take  the  same,  to  inquire  and  state  to 
the  court  what  parts,  if  any,  of  such  personal  estate  are  out- 


EQUITY    RULES.  671 

standing  or  undisposed  of,  unless  the   court  shall  otherwise 
direct. 

KULE  74. 

Whenever  any  reference  of  any  matter  is  made  to  a  master 
to  examine  and  report  thereon,  the  party  at  whose  instance,  or 
for  whose  benefit,  the  reference  is  made,  shall  cause  the  same 
to  be  presented  to  the  master  for  a  hearing  on  or  before  the 
next  rule-day  succeeding  the  time  when  the  reference  was 
made  ;  if  he  shall  omit  to  do  so,  the  adverse  party  shall  be  at 
liberty  forthwith  to  cause  proceedings  to  be  had  before  the 
master,  at  the  costs  of  the  party  procuring  the  reference. 

RULE  75. 

Upon  every  such  reference  it  shall  be  the  duty  of  the  master, 
as  soon  as  he  reasonably  can,  after  the  same  is  brought  before 
him,  to  assign  a  time  and  place  for  proceedings  in  the  same, 
and  to  give  due  notice  thereof  to  each  of  the  parties  or  their 
solicitors  ;  and  if  either  party  shall  fail  to  appear  at  the  time 
and  place  appointed,  the  master  shall  be  at  liberty  to  proceed 
exparte,  or,  in  his  discretion,  to  adjourn  the  examination  and 
proceedings  to  a  future  day,  giving  notice  to  the  absent  party 
or  his  solicitor  of  such  adjournment  ;  and  it  shall  be  the  duty 
of  the  master  to  proceed  with  all  reasonable  diligence  in  every 
such  reference,  and  with  the  least  practicable  delay,  and  either 
party  shall  be  at  liberty  to  apply  to  the  court,  or  a  judge 
thereof,  for  an  order  to  the  master  to  speed  the  proceedings, 
and  to  make  his  report,  and  to  certify  to  the  court  or  judge 
the  reasons  for  any  delay. 

RULE  76. 

In  the  reports  made  by  the  master  to  the  court  no  part  of  any 
state  of  facts,  charge,  affidavit,  deposition,  examination,  or 
answer  brought  in  or  used  before  them  shall  be  stated  or 
recited.  But  such  state  of  facts,  charge,  affidavit,  deposition,  ex- 
amination, or  answer  shall  be  identified,  specified,  and  referred 
to,  so  as  to  inform  the  court  what  state  of  facts,  charge,  affidavit, 
deposition,  examination,  or  answer  were  so  brought  in  or  used. 


672  EQUITY  RULES. 

RULE  77. 

The  master  shall  regulate  all  the  proceedings  in  every  hear- 
ing before  him,  upon  every  such  reference  ;  and  he  shall  have 
full  authority  to  examine  the  parties  in  the  cause,  upon  oath, 
touching  all  matters  contained  in  the  reference  ;  and  also  to 
require  the  production  of  all  books,  papers,  writings,  vouchers, 
and  other  documents  applicable  thereto  ;  and  also  to  examine 
an  oath,  viva  voce,  all  witnesses  produced  by  the  parties  before 
him,  and  to  order  the  examination  of  other  witnesses  to  be 
taken,  under  a  commission  to  be  issued  upon  his  certificate  from 
the  clerk's  office,  or  by  deposition,  according  to  the  acts  of 
Congress,  or  otherwise,  as  hereinafter  provided  ;  and  also  to 
direct  the  mode  in  which  the  matters  requiring  evidence  shall 
be  proved  before  him  ;  and  generally  to  do  all  other  acts,  and 
direct  all  other  inquiries  and  proceedings  in  the  matters  before 
him,  which  he  may  deem  necessary  and  proper  to  the  justice 
and  merits  thereof  and  the  rights  of  the  parties. 

RULE  78. 

Witnesses  who  live  within  the  district  may,  upon  due  notice 
to  the  opposite  party,  be  summoned  to  appear  before  the  com- 
missioner appointed  to  take  testimony,  or  before  a  master  or 
examiner  appointed  in  any  cause,  by  subpoena  in  the  usual 
form,  which  may  be  issued  by  the  clerk  in  blank,  and  filled 
up  by  the  party  praying  the  same,  or  by  the  commissioner, 
master,  or  examiner,  requiring  the  attendance  of  the  witnesses 
at  the  time  and  place  specified,  who  shall  be  allowed  for 
attendance  the  same  compensation  as  for  attendance  in  court ; 
and  if  any  witness  shall  refuse  to  appear  or  to  give  evidence, 
it  shall  be  deemed  a  contempt  of  the  court,  which,  being  cer- 
tified to  the  clerk's  office  by  the  commissioner,  master,  or 
examiner,  an  attachment  may  issue  thereupon  by  order  of  the 
court  or  of  any  judge  thereof,  in  the  same  manner  as  if  the 
contempt  were  for  not  attending,  or  for  refusing  to  give  tes- 
timony in  the  court.  But  nothing  herein  contained  shall 
prevent  the  examination  of  witnesses  viva  voce  when  produced 
in  open  court,  if  the  court  shall,  in  its  discretion,  deem  it 
advisable. 


EQUITY  RULES.  673 

KULE  79. 

All  parties  accounting  before  a  master  shall  bring  in  their 
respective  accounts  in  the  form  of  debtor  and  creditor ;  and 
any  of  the  other  parties  who  shall  not  be  satisfied  with  the 
accounts  so  brought  in  shall  be  at  liberty  to  examine  the  ac- 
counting party,  viva  voce,  or  upon  interrogatories  in  the 
master's  office,  or  by  deposition,  as  the  master  shall  direct. 

KULE  80. 

All  affidavits,  depositions,  and  documents  which  have  been 
previously  made,  read,  or  used  in  the  court,  upon  any  pro- 
ceeding in  any  cause  or  matter,  may  be  used  before  the  master. 

EULE  81. 

The  master  shall  be  at  liberty  to  examine  any  creditor  or 
other  person  coming  in  to  claim  before  him,  either  upon 
written  interrogatories  or  viva  voce,  or  in  both  modes,  as  the 
nature  of  the  case  may  appear  to  him  to  require.  The  evidence 
upon  such  examinations  shall  be  taken  down  by  the  master,  or 
by  some  other  person  by  his  order  and  in  his  presence,  if 
either  party  requires  it,  in  order  that  the  same  may  be  used 
by  the  court,  if  necessary. 

KULE  82. 

The  circuit  courts  may  appoint  standing  masters  in  chancery 
in  their  respective  districts,  both  the  judges  concurring  in  the 
appointment ;  and  they  may  also  appoint  a  master  pro  hac 
vice  in  any  particular  case.  The  compensation  to  be  allowed 
to  every  master  in  chancery  for  his  services  in  any  particular 
case,  shall  be  fixed  by  the  circuit  court  in  its  discretion,  having 
regard  to  all  the  circumstances  thereof,  and  the  compensation 
shall  be  charged  upon  and  borne  by  such  of  the  parties  in  tho 
cause  as  the  court  shall  direct.  The  master  shall  not  retain 
his  report  as  security  for  his  compensation  ;  but  when  tho 
compensation  is  allowed  by  the  court,  he  shall  be  entitled  to 
an  attachment  for  the  amount  against  the  party  who  is  ordered 
to  pay  the  same,  if,  upon  notice  thereof,  he  does  not  pay  it 
within  the  time  prescribed  by  the  court. 


674  EQUITY   RULES. 

Exceptions  to  Report  of  Master. 
KULE  83. 

The  master,  as  soon  as  bis  report  is  ready,  shall  return  the 
same  into  the  clerk's  office,  and  the  day  of  the  return  shall  be 
entered  by  the  clerk  in  the  order-book.  The  parties  shall  have 
one  month  from  the  time  of  filing  the  report  to  file  exceptions 
thereto  ;  and  if  no  exceptions  are  within  that  period  filed  by 
either  party,  the  report  shall  stand  confirmed  on  the  next  rule- 
day  after  the  month  is  expired.  If  exceptions  are  filed,  they 
shall  stand  for  hearing  before  the  court,  if  the  court  is  then  in 
session  ;  or,  if  not,  then  at  the  next  sitting  of  the  court  which 
shall  be  held  thereafter  by  adjournment  or  otherwise. 

KULE  84:. 

And  in  order  to  prevent  exceptions  to  reports  from  being 
filed  for  frivolous  causes,  or  for  mere  delay,  the  party  whose 
exceptions  are  overruled  shall,  for  every  exception  overruled, 
pay  costs  to  the  other  party,  and  for  every  exception  allowed 
shall  be  entitled  to  costs  ;  the  costs  to  be  fixed  in  each  case  by 
the  court,  by  a  standing  rule  of  the  circuit  court. 

Decrees. 

RULE  85. 

Clerical  mistakes  in  decrees,  or  decretal  orders,  or  errors 
arising  from  any  accidental  slip  or  omission,  may,  at  any  time 
before  an  actual  enrollment  thereof,  be  corrected  by  order  of 
the  court  or  a  judge  thereof,  upon  petition,  without  the  form 
or  expense  of  a  rehearing. 

RULE  86. 

In  drawing  up  decrees  and  orders,  neither  the  bill,  nor 
answer,  nor  other  pleadings,  nor  any  part  thereof,  nor  the  re- 
port of  any  master,  nor  any  other  prior  proceeding,  shall  be 
recited  or  stated  in  the  decree  or  order ;  but  the  decree  and 
order  shall  begin,  in  substance,  as  follows  :  ' '  This  cause  came 
on  to  be  heard  (or  to  be  further  heard,  as  the  case  may  be)  at 


EQUITY   RULES.  675 

this  term,  and  was  argued  by  counsel ;  and  thereupon,  upon 
consideration  thereof,  it  was  ordered,  adjudged,  and  decreed 
as  follows,  viz, ;"  [Here  insert  the  decree  or  order.] 

Guardians  and  Prochein  Amis. 
EULE  87. 

Guardians  ad  litem  to  defend  a  suit  may  be  appointed  by  the 
court,  or  by  any  judge  thereof,  for  infants  or  other  persons 
who  are  under  guardianship,  or  otherwise  incapable  to  sue  for 
themselves.  All  infants  and  other  persons  so  incapable  may 
sue  by  their  guardians,  if  any,  or  by  their prochein  ami  ;  sub- 
ject, however,  to  such  orders  as  the  court  may  direct  for  the 
protection  of  infants  and  other  persons, 

Rehearing. 

RULE  88. 

Every  petition  for  a  rehearing  shall  contain  the  special  mat- 
ter or  cause  on  which  such  rehearing  is  applied  for,  shall  be 
signed  by  counsel,  and  the  facts  therein  stated,  if  not  apparent 
on  the  record,  shall  be  verified  by  the  oath  of  the  party,  or  by 
some  other  person.  No  rehearing  shall  be  granted  after  the 
term  at  which  the  final  decree  of  the  court  shall  have  been  en- 
tered and  recorded,  if  an  appeal  lies  to  the  Supreme  Court. 
But  if  no  appeal  lies,  the  petition  may  be  admitted  at  any  time 
before  the  end  of  the  next  term  of  the  court,  in  the  discretion 
of  the  court. 

RULE  89. 

The  circuit  courts  (both  judges  concurring  therein)  may 
make  any  other  and  further  rules  and  regulations  for  the  prac- 
tice, proceedings,  and  process,  mesne  and  final,  in  their 
respective  districts,  not  inconsistent  with  the  rules  hereby 
prescribed,  in  their  discretion,  and  from  time  to  time  alter 
and  amend  the  same. 


676  EQUITY  RULES. 

KULE  90. 

In  all  cases  where  the  rules  prescribed  by  this  court  or  by 
the  circuit  court  do  not  apply,  the  practice  of  the  circuit  court 
shall  be  regulated  by  the  present  practice  of  the  high  court  of 
chancery  in  England,  so  far  as  the  same  may  reasonably  be 
applied  consistently  with  the  local  circumstances  and  local  con- 
veniences of  the  district  where  the  court  is  held,  not  as  posi- 
tive rules,  but  as  furnishing  just  analogies  to  regulate  the 
practice. 

RULE  91. 

Whenever,  under  these  rules,  an  oath  is  or  may  be  required 
to  be  taken,  the  party  may,  if  conscientiously  scrupulous  of 
taking  an  oath,  in  lieu  thereof,  make  solemn  affirmation  to  the 
truth  of  the  facts  stated  by  him. 

RULE  92. 

In  suits  in  equity  for  the  foreclosure  of  mortgages  in  the 
circuit  courts  of  the  United  States,  or  in  any  court  of  the  Ter- 
ritories having  jurisdiction  of  the  same,  a  decree  may  be  ren- 
dered for  any  balance  that  may  be  found  due  to  the  complain- 
ant over  and  above  the  proceeds  of  the  sale  or  sales,  and 
execution  may  issue  for  the  collection  of  the  same,  as  is 
provided  in  the  8th  rule  of  this  court  regulating  the  equity 
practice,  where  the  decree  is  solely  for  the  payment  of  money. 

RULE  93. 

When  an  appeal  from  a  final  decree  in  an  equity  suit,  grant- 
ing or  dissolving  an  injunction,  is  allowed  by  a  justice  or  judge 
who  took  part  in  the  decision  of  the  cause,  he  may,  in  his  dis- 
cretion, at  the  time  of  such  allowance,  make  an  order  suspending 
or  modifying  the  injunction  during  the  pendency  of  the  appeal, 
upon  such  terms  as  to  bond  or  otherwise  as  he  may  consider 
proper  for  the  security  of  the  rights  of  the  opposite  party. 

RULE  94. 

Every  bill  brought  by  one  or  more  stockholders  in  a  corpo- 
ration, against  the  corporation  and  other  parties,  founded  on 


EQUITY   RULES.  677 

rights  which  may  properly  be  asserted  by  the  corporation,  must 
be  verified  by  oath,  and  must  contain  an  allegation  that  the  plain- 
tiff was  a  shareholder  at  the  time  of  the  transaction  of  which  he 
complains,  or  that  his  share  had  devolved  on  him  since  by 
operation  of  law ;  and  that  the  suit  is  not  a  collusive  one  to 
confer  on  a  court  of  the  United  States  jurisdiction  of  a  case  of 
which  it  would  not  otherwise  have  cognizance.  It  must  also 
set  forth  with  particularity  the  efforts  of  the  plaintiff  to  secure 
such  action  as  he  desires  on  the  part  of  the  managing  directors 
or  trustees,  and,  if  necessary,  of  the  shareholders,  and  the  causes 
of  his  failure  to  obtain  such  action. 


INDEX. 


THE   REFERENCES   ABB  TO  THE   SECTIONS. 


ABANDONMENT,  « 

actual,  of  applications,  145. 
actual,  of  invention,  87-92. 

actual,  of  invention,  by  acquiescence  in  rejection  of  application,  92. 
actual,  of  invention,  by  disclaimer,  90. 
actual,  of  invention,  by  express  declaration,  89. 
actual,  of  invention,  by  laches,  91. 
constructive,  of  application,  146. 
constructive,  of  application,  working  constructive  abandonment  of 

invention,  103,  147. 
constructive,  of  invention,  87,  93,  147. 
constructive,  of  invention,  after  application,  103. 
constructive,  of  invention,   must  be  negatived  in  declarations  and 

bills,  425,  579. 

constructive,  of  invention,  not  condoned  by  excuses,  104. 
evidence  of  actual,  512. 
evidence  of  constructive,  513. 
how  pleaded  in  actions  at  law,  449. 
how  pleaded  in  actions  in  equity,  602. 
of  experiments,  86. 
of  invention,  86. 

of  invention,  after  issue  of  letters  patent,  106,  107. 
of  patents,  106,  107. 
several  kinds  of,  86. 

ACCIDENT 

causing  reissuable  faults,  220. 

ACCOUNT 

of  profits,  covering  what  time,  714. 

ACCOUNTINGS 

before  masters,  739-743. 


680  INDEX. 

ACQUIESCENCE 

in  rejection  of  applications,  92. 

necessary  length  of,  as  foundation  of  right  to  preliminary  injunc- 
tions, 668,  669. 

need  not  be  universal,  in  order  to  constitute  foundation  of  right  to 
preliminary  injunctions,  670. 

public,  as  foundation  of  right  to  preliminary  injunctions,  665,  667. 

working  license,  312. 
ACTIONS 

for  infringement  are  transitory,  389. 

for  infringement  not  affected  by  subsequent  disclaimers,  193. 

on  assigned  rights  of  action,  395,  435,  579. 

to  enforce  contracts  relevant  to  patents,  388. 

to  set  aside  contracts  relevant  to  patents,  388. 

ACTIONS  AT  LAW 

declaration  in,  422-438. 

defendants  in,  401-416. 

for  assigned  rights  of  action,  395,  435. 

for  infringements  of  patents,  418. 

plaintiffs  in,  394-400. 

pleas  in,  439-477. 

practice  in,  489. 

testimony  in,  535. 

trial  of,  487. 

ACTIONS  IN  EQUITY, 

answer  in,  598-622. 

bill  in,  576-584. 

complainants  in,  394-400,  574. 

defendants  in,  401-416,  575. 

depositions  in,  638,  639. 

for  assigned  rights  of  actions,  395. 
^    hearing  in,  632. 

hearing  in,  before  masters,  643. 

pleas  in,  589,  590. 

rehearing  in,  645-648. 

replications  in,  623. 

trial  by  jury  in,  642. 
ADDITION 

to  composition  of  matter,  as  affecting  infringement,  369. 

to  mechanical  patent,  as  affecting  infringement,  347. 
AFFIDAVITS 

on  motions  for  new  trials,  539. 

on  motions  for  preliminary  injunctions,  662. 

on  motions  to  dissolve  preliminary  injunctions,  694. 

on  petitions  for  leave  to  file  bills  of  review,  652. 

on  petitions  for  rehearings,  647. 


INDEX.  681 

AFFIBMATION 

made  instead  of  oath,  124. 
AGENTS 

as  defendants  in  actions  for  infringement,  403. 
AGGREGATION 

distinguished  from  combination,  32. 
AMENDMENTS 

of  applications  for  patents,  135-139. 

of  bills  in  equity,  586,  587. 

of  declarations  at  law,  483. 

of  drawings  and  models,  138,  214. 
ANSWEBS 

to  bills  of  complaint,  588,  598-622. 

to  bills  in  the  nature  of  supplemental  bills,  631. 

to  supplemental  bills,  631. 

when  used  as  affidavits,  662,  694. 
ANTIQUITY  OF  PABTS 

never  negatives  novelty  of  combinations,  66. 
APPEALS 

from  board  of  examiners-in-chief  to  Commissioner  of  Patents,  132. 

from  Commissioner  to  Supreme  Court  of  District  of  Columbia,  132  - 
134,  144. 

from  examiners  to  board  of  examiners-in-chief.  132. 

to  Supreme  Court  of  the  United  States,  from  circuit  courts,  144,  209, 

644,  654,  655,  691,  703. 
APPLICATIONS, 

actual  abandonment  of,  145. 

amendment  of,  135-139. 

Commissioner's  decision  upon,  148. 

constructive  abandonment  of,  146. 

dates  of,  129. 

elements  of,  109. 

examination  of,  130. 

fees  due  upon  filing,  125. 

for  letters  patent,  109. 

for  Patent  Office  extensions,  261,  266. 

for  reissues,  212-214,  250. 

how  stated  in  declarations  and  bills,  427,  579. 

may  fix  dates  of  inventions,  59,  69. 

more  than  two  years  after  sale  or  public  use,  93. 

more  than  two  years  after  making,  99. 

never  negative  novelty,  58,  60. 

of  executors  or  administrators,  123. 

papers  forming,  when  evidence,  187. 

re-examination  of,  131. 

rejection  of,  131. 


682  INDEX. 

ABT, 

patent-law,  meaning  of  the  word,  3. 

ASSIGNEES 

as  complainants  or  plaintiffs,  394-397. 
may  receive  letters  patent,  110,  171. 
may  receive  reissues,  212,  250,  252. 

ASSIGNMENTS 

authenticated,  how,  275. 

conflicting,  281. 

construction  of,  278. 

description  in,  275. 

notice  of,  281. 

of  extensions,  280. 

of  inventions,  97,  273. 

of  licenses,  310. 

of  patents,  274. 

of  patents  under  creditors'  bills,  156. 

of  rights  of  action  for  past  infringement,  277,  281. 

pendente  lite,  699. 

recording  of,  281. 

reformation  of,  278,  279. 

ASSTJMPSIT, 

actions  of,  418-420. 

BALDWIN,  JUSTICE, 

opinion  on  rights  of  persons  to  use  a  patented  process,  who  used  it 
with  the  consent  of  the  inventor  before  the  patent,  159. 

BANKRUPTCY 

conveying  title  to  patent  rights,  290. 

BABB,  JUDGE, 

opinion  on  construction  of  the  national  statute  of  limitation,  475. 

BEAUTY 

has  a  utility  of  its  own,  22,  80. 

BENEDICT,  JUDGE, 

opinion  on  a  question  of  utility,  78. 

BELLS  IN  EQUITY, 

amendments  of,  586,  587. 

answers  to,  588. 

defences  to,  591. 

for  preliminary  injunctions,  660. 

interrogating  part  of,  581. 

introductory  part  of,  578. 

oaths  to,  584.  , 


INDEX.  683 

BILLS  IN  EQUITY — Continued. 
original,  576. 
pleas  to,  589,  590. 
prayer  for  process  in,  582. 
prayer  for  relief  in,  580. 
signature  of  counsel  in,  583. 
stating  part  of,  579. 

to  compel  issue  of  letters  patent,  134,  144. 
to  perpetuate  testimony,  585. 
when  may  be  composite,  629. 
•when  may  be  used  as  affidavits,  662. 

BILLS  IN  THE  NATURE  OF  BILLS  OF  REVIEW, 
by  whom  filed,  653. 

distinguished  from  bills  of  review,  653. 
required,  when,  653. 

BILLS  IN  THE  NATURE  OF  BILLS  OF  REVTTOB, 
by  whom  filed,  628. 
required,  when,  628. 
subordinate  to  original  bills,  624. 

BILLS  IN  THE  NATURE  OF  SUPPLEMENTAL  BILLS, 
leave  of  court  necessary  to  filing,  630. 
required,  when,  €26. 
subordinate  to  original  bills,  624. 

BILLS  OF  REVIEW, 

by  whom  filed,  653. 

filed  subsequent  to  appeal,  652. 

sorts  of,  650. 

to  correct  errors  apparent  on  the  record  or  pleadings,  651. 

to  introduce  newly  discovered  evidence,  652. 

when  proper,  650. 

BILLS  OF  REVTVQB, 

by  whom  filed,  628. 
proceedings  upon,  627. 
subordinate  to  original  bills,  624. 
when  required,  627. 

BILLS  OF  REVTVOR  AND  SUPPLEMENT, 
when  required,  629. 

BILLS  OF  EXCEPTIONS, 

nature  and  function  of,  551,  552. 

what  must  contain,  and  what  exclude,  551,  552. 

when  to  be  prepared  and  signed,  554. 

where  cases  are  tried  by  judge  without  jury,  540. 


684  INDEX. 

BLATCHFORD,  JUSTICE, 

opinion  on  element  of  age  in  equivalents,  355,  357. 

opinion  on  decrees,  where  a  disclaimer  is  found  necessary,  209. 

opinion  on  disclaimers,  199. 

opinion  on  duration  of  patents  for  inventions  previously  patented  in 

a  foreign  country,  169. 

opinion  on  injunctions  in  interference  actions,  319. 
opinion  on  interest  on  profits,  737. 
opinion  on  invention,  37. 
opinion  on  respective  rights  of  patentees  and  others,  160. 

BLODGETT,  JUDGE, 

opinions  on  invention,  31,  35. 
opinion  on  subject  of  patents,  5. 

BOND,  JUDGE, 

opinion  on  invention,  34. 

BONDS 

required  from    complainants    on  issuing   preliminary  injunctions, 

688,  696. 
required  from  defendants  in  place  of  a  preliminary  injunction,  685- 

687. 
required  from  defendants,  where  permanent  injunction  is  postponed 

till  final  decree,  702. 
required  from  defendants  where  permanent  injunction  is  suspended 

pending  an  appeal,  703. 

BBADLET,  JUSTICE, 

dissenting  opinion  in  Hartell  v.  Tilghman,  388. 

opinion  on  description  in  specification,  174. 

opinion  on  force  of  the  Commissioner's  decision  in  reissue  cases,  223. 

opinion  on  indistinct  claims,  455. 

opinion  on  invention,  25,  26. 

opinion  on  jurisdiction  of  circuit  courts  in  actions  against  govern- 
ment officers,  393. 

opinion  on  jurisdiction  of  the  court  of  claims,  in  actions  for  infringe- 
ment against  the  government,  392. 

BROADENED  REISSUES, 

when  too  late  to  apply  for,  226,  227. 

BUBDEN  OF  PROOF 

on  questions  of  abandonment,  108. 
on  questions  of  novelty,  76. 
on  questions  of  profits,  719. 
on  questions  of  utility,  85. 

BUTLER,  JUDGE, 

opinion  on  duration  of  patent  for  invention  previously  patented  in  a 
foreign  country,  169. 


INDEX.  685 

CADWALLADER,  JUDGE, 

opinion  on  decree,  where  a  disclaimer  is  found  necessary,  209. 

CAMPBELL,  JUSTICE, 

opinion  on  attempts  to  disguise  legal  liability,  414. 

CAUSES  OF  ACTION, 

when  plurality  of  are  suable  in  one  action,  41 1. 

• 
CAVEATS, 

their  nature  and  function,  143. 

CAVEAT  EMPTOB, 

application  of  the  maxim,  286. 

CEBTIFICATE  OF  DIVISION  OF  OPINION, 
function  and  operation  of,  657. 

CITIZENSHIP 

stated  in  declarations  and  bills,  422,  423,  426,  579. 

CLAIMS, 

compound,  in  respect  of  disclaimers,  199. 

construed  in  the  light  of  the  state  of  the  art,  184. 

defective,  218. 

excessive,  216 

for  combinations,  198. 

for  single  devices,  in  reissues,  246. 

function  of,  176. 

functional  in  form,  183. 

how  written,  116. 

indistinct,  177. 

indistinctness  of,  how  affecting  letters  patent,  178. 

indistinctness  of,  how  pleaded  in  actions  at  law,  455. 

indistinctness  of,  how  pleaded  in  actions  in  equity,  608. 

indistinctness  of,  how  proven,  520. 

in  specifications  of  compositions  of  matter,  119. 

in  specifications  of  machines,  117. 

in  specifications  of  manufactures,  118. 

in  specifiations  of  processes,  120. 

insufficient,  218. 

valid  and  void,  in  same  letters  patent  or  reissue,  177,  249. 

validity  of,  governs  validity  of  letters  patent,  177. 

CLIFFORD,  JUSTICE, 

opinion  on  element  of  age  in  equivalents,  354,  856. 

opinion    on    duration  of  patent  for  invention  previously  patented 

in  a  foreign  country,  168. 
opinion  on  force  of  Commissioner's  decision  in  reissue  cases,  222. 


686  INDEX. 

COMBINATIONS, 

claims  for,  not  to  be  broadened  by  construction,  186. 
dissolved  by  omission  of  an  element,  349. 
distinguished  from  aggregations,  32. 
every  part  of,  conclusively  presumed  to  be  material,  349. 
of  old  devices,  having  old  mode  of  operation,  37. 
patentability  of,  26,  33. 

COMITY 

between  courts  on  questions  of  fact,  635. 

COMMISSIONER  OF  PATENTS, 

appeals  to,  from  board  of  examiners-in-chief,  132. 

appeals  from,  to  Supreme  Court  of  District  of  Columbia,  132. 

erroneous  decision  of,  when  remedied  by  reissue,  220. 

force  of  decision  of,  in  application  cases,  148. 

force  of  decision  of,  in  extension  cases,  266. 

force  of  decision  of,  in  interference  cases,  142,  318. 

force  of  decision  of,  in  reissue  cases,  221-225. 

COMMON  LAW 

confers  no  paramount  right  in  inventions,  149. 

COMPLAINANT, 

exceptions  of,  to  master's  report,  749. 
who  may  be,  in  patent  cases,  394-400,  574. 

COMPOSITIONS  OF  MATTEE, 

claims  in  specifications  of,  119. 

distinguishable  from  manufactures,  19. 

patents  for,  how  infringed,  369. 

prerequisites  of  patentability  of,  18. 

specimens  of,  128. 

subjects  of  patents,  1. 

the  various  classes  of,  in  respect  of  infringement,  374. 

COMPROMISE 

money  paid  in,  no  criterion  of  damages,  559. 

CONFORMITY  ACT, 

Federal,  relevant  to  practice,  421. 

CONGRESS, 

power  of,  to  promote  progress  of  science  and  useful  arts,  1. 

CONSENT 

to  public  use  or  being  on  sale  more  than  two  years  before  applica- 
tion, 102. 

CONSIDERATION, 

partial  or  total  failure  to  pay,  for  assignment,  276. 


INDEX.  687 

CONSTITUTION  OP  THE  UNITED  STATES, 

foundation  of  United  States  patents,  1,  150. 

CONSTEUCTION 

of  assignments,  278. 

of  claims,  functional,  183. 

of  claims  in  the  light  of  the  state  of  the  art,  184. 

of  claims  narrowly,  when  necessary  to  save  their  validity,  185. 

of  letters  patent,  181. 

of  letters  patent  according  to  contemporaneous  laws,  188. 

of  letters  patent  after  disclaimer,  207. 

of  letters  patent  in  light  of  contemporaneous    construction  of  the 

inventor,  187. 

of  letters  patent  in  the  light  of  expert  testimony,  189,  500. 
of  letters  patent  on  motions  for  preliminary  injunctions,  676. 
of  letters  patent,  question  of  law,  189. 
of  letters  patent  with  proper  liberality,  185. 
of  letters  patent  with  proper  strictness,  186. 
of  licenses,  306. 
of  reissues,  248. 
of  title  papers  on  motions  for  preliminary  injunctions,  675. 

CONTBIBUTION 

between  joint  infringers,  531. 

COEPOBATIONS 

as  defendants  in  patent  cases,  401,  409. 

assignments  of  patents  to,  275. 

consolidated,  as  defendants,  416. 

consolidated,  invoking  licenses  given  to  their  constituents,  310. 

dissolution  of,  pendenle  lite,  700. 

how  mentioned  in  declarations  and  bills,  422,  578. 

•where  suable  for  infringements  of  patents,  389. 

COSTS 

in  cases  of  disclaimer,  205,  208. 

in  cases  of  new  trials,  539. 

in  favor  of  whom  recoverable,  543. 

may  include  what,  544-549. 

on  amendment  of  bills,  586. 

taxed  how,  544-549. 

where  equity  refuses  to  take  jurisdiction,  594. 

COUBTS, 

circuit,  bills  in,  to  compel  issue  of  letters  patent,  134. 

circuit,   jurisdiction  of,    over    patent    actions  against  government 

agents,  393. 
circuit,  title  of,  422. 

comity  between,  on  questions  of  fact,  635. 
having  original  jurisdiction  in  actions  for  infringement,  379. 


INDEX. 

COUETS —  Continued. 

having  jurisdiction  in  qui  tarn  actions,  331. 
having  jurisdiction  to  grant  injunctions,  658. 
having  j  urisdiction  to  repeal  patents,  323. 
title  of,  in  bills  of  complaint,  577. 

COUBT  OF  CLAIMS, 

jurisdiction  of,  in  certain  patent  cases,  391,  392. 

CEEDITOES'  BILLS, 

patent  rights  subject  to,  156. 

title  transferred  by,  289. 
CROSS  APPEALS 

to  Supreme  Court,  655. 
CBOSS  BILLS 

not  required  in  interference  actions,  316. 

CURTIS,  JUSTICE, 

opinion  on  invention,  33. 

opinion  on  mode  of  operation,  346. 
DAMAGES 

accruing  before  surrender  and  reissue,  231. 

actual,  not  lessened  by  ignorance  of  patent,  569. 

decrees  for,  573. 

evidence  of,  502,  565,  636. 

excessive  assessment  of,  how  remedied,  539. 

exemplary,  567. 

for  infringement  by  making,  564. 

generic  measure  of,  555. 

how  stated  in  declarations,  436. 

include  no  counsel  fees  or  other  expenses  of  litigation,  570. 

increased,  568. 

interest  on,  571. 

jurisdiction  of,  equity  to  assess,  573. 

measures  of,  555-563. 

no  measure  of  profits,  716. 

not  measured  by  what,  559,  560. 

remote  consequential,  566. 

resulting  to  defendants  from  improper  injunctions,  696. 

when  measured  by  royalties,  562. 

DANIEL,  JUSTICE, 

opinion  on  patents,  153. 
DATES 

of  applications,  how  proven,  129. 

of  invention,  the  only  issue  in  interference  actions,  317. 

of  patented  inventions,  how  fixed,  60,  69,  70. 

of  unpatented  inventions,  when  fixed  by  aid  of  abandoned  appli- 
cations, 59. 


INDEX.  689 

DECLARATIONS, 

commencement  of,  422. 

conclusion  of,  437. 

degree  of  correctness  required  in,  438. 

in  trespass  on  the  case,  422-438. 

statement  of  right  of  action  in,  423-436. 

title  of  court  in,  422. 

title  of  term  in,  422. 

venue  in,  422. 

when  demurrable  in  patent  actions,  483. 

DECREES, 

action  of  Supreme  Court  upon,  656. 
'  .     appeals  from,  654. 

by  consent  of  defendant  when  injunction  is  based  on,  709. 

consent,  when  foundation  of  preliminary  injunctions  against  third 

parties,  672. 

final,  when  entered,  649. 
for  pecuniary  recoveries,  573. 
how  assailable  in  the  Supreme  Court,  655. 
in  interference  actions,  320. 
interlocutory,  644. 

interlocutory,  not  pleadable  as  res  judicata,  468. 
interlocutory,  when  including  order  for  permanent  injunction,  697. 
performance  of,  before  filing  bills  of  review,  650. 
pro  confesso,  pleadable  as  res  judicata,  468. 

pro  confesso,  when  foundation  of  right  to  preliminary  injunction,  671. 
reversal  of,  by  Supreme  Court,  resulting  in  dismissal  of  bill,  704. 
where  disclaimer  is  found  necessary,  209. 

DEFECTIVE, 

meaning  of  the  word,  in  the  law  of  reissues,  217. 

DEFENCES 

based  on  expiration  of  patent,  441. 

based  on  omission  to  mark  "patented,"  441. 

based  on  repeal  of  patent,  441. 

in  respect  of  their  classification,  441. 

in  respect  of  special  pleading,  442. 

laches,  how  set  up,  597. 

the  twenty-seven,  440,  591. 

those    pleadable    by    the    general     issue,    with    notice    of    special 

matter,  443. 
to  bills  in  equity,  588. 

to  bills  in  the  nature  of  supplemental  bills,  631. 
to  motions  for  preliminary  injunctions,  677-684. 
to  supplemental  bills,  631. 
where  licensee  is  sued  as  iufringer,  309. 


690  INDfcZ. 

DEFENCES —  Continued. 

which  assail  extensions,  441. 
which  assail  reissues,  441. 
which  deny  validity,  441. 

DEFENDANTS, 

costs  recoverable  by,  543. 

death  of,  pendenle  lite,  700. 

evidence  in  chief,  503-534. 

doings  of,  how  proven  by  plaintiffs,  497. 

in  actions  at  law,  401-416. 

in  actions  in  equity,  401-416,  575. 

in  patent  actions  generally,  401-416. 

where  suable  for  infringement,  389,  390. 

DEMTJEEEKS  IN  ACTIONS  AT  LAW, 
function  of,  482. 
joinder  in,  486. 
to  declarations,  482,  483. 
to  pleas,  482,  484. 
to  replications,  482,  485. 
to  rejoinders,  482. 

DEMTJEBEES  IN  ACTIONS  IN  EQUITY 
setting  up  laches,  597. 
setting  up  non-jurisdiction  of  equity,  594. 
sustaining  to  bill,  649. 

take  precedence  of  motions  for  preliminary  injunctions,  663. 
to  bills,  588. 

to  bills  in  the  nature  of  supplemental  bills,  631. 
to  supplemental  bills,  631. 

DEPOSITIONS 

in  actions  at  law,  535. 

in  actions  in  equity,  639. 

used  in  cases  other  than  those  in  which  taken,  640. 

DESCBIPTIONS, 

defective,  218. 

errors  in,  175. 

excess  of,  175. 

fullness  of,  174. 

in  general,  111,  115. 

insufficient,  218. 

need  not  be  changed  in  case  of  disclaimer,  207, 

vague,  how  affecting  letters  patent,  178. 

DESIGNS, 

novelty  of,  64. 

on  whose  invention  patentable,  21. 


INDEX.  691 

DESIGNS — Continued. 

subjects  of  patents,  20. 
utility  of,  22. 

DESIGN  PATENTS, 

duration  of,  162. 

fees  for,  125. 

how  infringed,  375. 

DlFFEBENCE, 

what  degree  of,  inconsistent  with  negation  of  novelty,  57. 

DILLON,  JTTDGE, 

opinion  on  construction  of  the  national  statute  of  limitation,  475. 

DIKECTOES 

of  corporations  as  defendants,  410,  411,  414,  415. 

DISCLAIMERS 

as  documents,  193. 

based  on  mistake  of  fact,  195. 

based  on  mistake  of  law,  196. 

causes  of  necessity  for,  193. 

costs  in  cases  of,  205. 

decrees,  in  cases  of  necessity  for,  209. 

effect  of,  on  pending  actions,  193. 

errors  which  do  not  justify,  197. 

errors  which  justify,  194. 

filed  by  part  owner.  206. 

filed  pending  suit,  208. 

function  of,  197. 

how  affected  by  fraudulent  or  deceptive  intention,  202. 

how  stated  in  declarations,  430. 

in  respect  of  combination  claims,  198. 

in  respect  of  compound  claims,  199. 

in  respect  of  immaterial  claims,  200. 

letters  patent,  how  construed  after,  207. 

need  not  change  description,  207. 

of  equivalents,  372. 

of  reissue  claims,  201. 

right  of  appeal  on,  necessity  for,  209. 

statements  in,  206. 

statutory  authorization  of,  192. 

subject  of,  not  reclaimable  by  reissue  or  otherwise,  209,  241. 

unreasonable  delay  to  file,  203,  208. 

unreasonable  delay  to  file,  how  pleaded  in  actions  at  law,  456. 

unreasonable  delay  to  file,  how  pleaded  in  actions  in  equity,  609. 

unreasonable  delay  to  file,  how  proven,  521. 

unreasonable  delay  to  file,  when  beginning,  204. 

working  abandonment  of  invention,  90. 


692  INDEX. 

DISCOVERY, 

patent-law  meaning  of  the  word,  2. 

DIVISION  or  OPINION, 

certificate  of,  657. 

DOUBLE  USE 

not  invention,  38. 

l 
DRAWINGS, 

amendment  of,  138,  214. 

constitute  part  of  letters  patent,  172. 

description  of,  in  specification,  111,  114. 

in  prior  patents  or  printed  publications,  56. 

may  aid  construction  of  claims,  182. 

may  constitute  birth  of  subsequently  patented  invention,  70, 

reissues  based  on,  237. 

unpublished,  never  negative  novelty,  61. 

what  must  show,  126. 

when  required,  126. 

DUB  PROCESS  OF  LAW, 

meaning  of  the  phrase,  151. 
statutes  are  not,  158. 

EMPLOYERS 

as  defendants,  404. 

EMPLOYES 

as  defendants,  403. 

EQUITY, 

hearings  in,  632. 

jurisdiction  of,  in  infringement  cases,  572,  592,  593. 
jurisdiction  of,  in  infringement  cases,  not  dependent  on  prior  adjudi- 
cation at  law,  595. 

jurisdiction  of,  over  interfering  patents,  316. 
jurisdiction  of,  to  repeal  patents,  322. 
laches  a  defence  in,  591,  596. 
non-jurisdiction  of,  591,  592. 
non-jurisdiction  of,  how  set  up,  594. 
profits  recoverable  in,  711. 

EQUIVALENTS 

among  ingredients  of  compositions  of  matter,  370. 

among  elements  of  processes,  338. 

defined,  358. 

disclaimed,  372. 

element  of  age  in,  354-358. 

inquired  into,  351. 

meaning  of  the  word,  352-358. 


INDEX.  693 

EQUIVALENTS—  Continued. 

substitution  of,  not  invention,  36. 
tests  of,  362. 

•whether  claimable  in  reissues,   when  not  described  or  claimed  in 
originals,  247. 

ERROBS 

of  judge  or  jury,  when  ground  for  new  trial,  539. 

ESTOPPEL 

by  matter  of  deed,  469. 

by  matter  inpais,  313. 

by  matter  of  record,  468. 

classes  of,  467. 

conveying  title,  275. 

elements  of,  313. 

in  actions  at  law,  440,  467. 

in  actions  in  equity,  591,  621. 

in  interferences,  141. 

on  motions  for  preliminary  injunctions,  683. 

pleaded  how,  in  actions  at  law,  470. 

pleaded  how,  in  actions  in  equity,  621. 

proven  how,  533. 

working  implied  license,  313. 

EVICTION 

of  licensees,  307. 

EVIDENCE 

before  masters,  740,  741. 

complainant's,  in  chief,  636. 

documentary,  in  equity  cases,  641. 

how  far  to  be  set  forth  in  bills  of  exceptions,  551,  552. 

in  disproof  of  infringement,  when  unnecessary,  532. 

in  equity  cases,  637. 

in  interference  actions,  318. 

newly  discovered,  when  ground  for  new  trial,  539. 

newly  discovered,  when  ground  for  rehearing,  647. 

newly  discovered,  when  ground  for  bill  of  review,  652. 

objections  to,  before  masters,  741. 

objections  to,  for  want  of  pleading,  600. 

objections  to,  when  to  be  made,  535. 

of  absence  of  inadvertence,  accident,  and  mistake,  522. 

of  actual  abandonment,  512. 

of  constructive  abandonment,  513. 

of  damages,  502,  565. 

of  deceitfully  lacking  or  excessive  specification,  518. 

of  defendants,  in  chief,  503-534. 

of  estoppel,  533. 


694  INDEX. 

EVIDENCE —  Continued. 
of  experts,  498. 

of  expiration  of  patent  before  end  of  apparent  term,  527. 
of  facts  to  sustain  defence  in  Miller  v.  Brass  Co.,  523. 
of  infringement,  497-501. 
of  joint  invention  for  sole  patent,  516. 

of  lack  of  identity  between  application  and  letters  patent,  514. 
of  lack  of  identity  between  letters  patent  and  reissue,  459,  524. 
of  lack  of  statutory  application  for  extension,  525. 
of  licenses,  530. 
of  non-infringement,  532. 
of  not  being  a  proper  subject  of  a  patent,  504. 
of  omission  to  mark  "  patented,"  528. 
of  prior  knowledge  or  use,  508. 
of  prior  patents,  506. 
of  prior  printed  publications,  507. 
of  profits,  636,  740. 
of  release,  531. 
of  repeal  of  patent,  526. 
of  res  judicata,  533. 

of  sole  invention  for  joint  patent,  517. 
of  surreptitious  or  unjust  obtaining  of  patent,  515. 
of  unreasonable  delay  to  file  disclaimer,  521. 
of  want  of  invention,  505. 
of  want  of  novelty,  506-510. 
of  want  of  title,  529. 
of  want  of  utility,  511. 
plaintiffs,  in  chief,  491. 
rules  of,  in  interferences,  141. 
rules  of,  in  patent  actions,  490. 
that  claims  are  indistinct,  520. 
that  specification  is  insufficient,  519. 
to  rebut  defence  of  laches,  636. 
to  rebut  defence  of  want  of  novelty,  509,  510. 
to  support  defence  of  laches,  637. 
to  support  plea  of  statute  of  limitations,  534. 

EXAMINATION 

of  applications,  130. 

EXAMTNEES-IN-CHrEP, 

appeals  to  board  of,  132. 

EXCEPTIONS 

to  instructions,  and  to  refusals  to  instruct,  553,  554. 

ExEctrroBS  AND  ADMNISTKATORS 

applying  for  letters  patent,  110,  171. 
applying  for  Patent-Office  extensions,  261. 


INDEX.  695 

ExEctrroBS  AND  ADMINISTRATOBS — Continued. 

applying  for  reissues,  250.  . 

as  plaintiffs  or  complainants,  396. 

filing  disclaimers,  206. 

oath  of,  to  applications,  123. 

reissue  granted  to  one  of  several,  251. 

EXPEBIMENTAL    USE, 

distinguished  from  "public  use,"  J.5. 

EXPEBTS, 

cross-ezamination  of,  501. 

hypothetical  questions  put  to,  499. 

testimony  of,  affecting  construction  of  letters  patent,  189,  500. 

testimony  of,  on  motions  for  preliminary  injunctions,  676. 

testimony  of,  regarding  the  state  of  the  art,  500. 

testimony  of,  relevant  to  infringement,  498. 

testimony  of,  relevant  to  non-infringement,  532. 

EXPIRATION  OF  PATENT, 

how  pleaded  in  actions  at  law,  462. 
how  pleaded  in  actions'  in  equity,  615. 
how  proven,  527. 

EXTENSIONS, 

application  for  Patent-Office  extension,  261. 

assignability  of  inchoate  right  to  Patent  Office  extension,  273. 

assignment  of,  280. 

constitutional  foundation  of,  255. 

congressional,  256. 

congressional,  how  effected,  257. 

congressional,  whom  for  benefit  of,  258. 

facts  justifying  Patent-Office  extension,  267. 

fraud  in  procuring  or  granting  Patent-Office  extension,  269. 

how  stated  in  declarations,  431. 

lack  of  statutory  application  for  Patent-Office  extension,  how  pleaded 

in  actions  at  law,  460. 
lack  of  statutory  application  for  Patent-Office  extension,  how  pleaded 

in  actions  in  equity,  613. 
lack  of  statutory  application  for  Patent-Office  extension,  how  proven, 

525. 

Patent-Office  extensions,  259. 
Patent-Office  extensions,  applications  for,  261. 
Patent-Office  extensions,  certified  how,  265. 
Patent-Office  extensions,  grantable  when,  262,  264. 
Patent-Office  extensions,  inventors'  rights  therein,  263. 
Patent-Office  extensions,  operation  of,  on  existing  specimens  of  the 

invention,  270,  271. 
Patent-Office  extensions,  proceedings  on  application  for,  268. 


696  INDEX. 

EXTENSIONS —  Continued. 

Patent-Office  extensions,  repeal  of,  269. 
Patent-Office  extensions,  statutory  foundation  of,  260. 
Patent-Office  extensions,  evidence  of  validity  of,  493. 

FAULTS 

which  cause  patents  to  be  reissuable,  218. 

FEES, 

attorney's  docket,  taxable  as  costs,  545. 
clerks' ,  taxable  as  costs,  546. 
commissioners',  taxable  as  costs,  547. 
final  Patent-Office,  103,  125. 
witness,  taxable  as  costs,  548. 

FIELD,  JUSTICE, 

opinion  on  force  of  commissioner's  decision  in  reissue  cases,  223. 
opinion  on  jurisdiction  of  State  courts,  385. 

FIFTH  AMENDMENT 

to  Constitution  of  United  States,  151,  158. 

FINDING 

of  judge,  when  trying  action  at  law  without  a  jury,  540. 

FOREIGN  COUNTBT, 

knowledge  or  use  in,  prior  to  patentee's  invention,  54. 
public  use  or  sale  in,  more  than  two  years  prior  to  patentee's  applica- 
tion, 101. 

FOBEIGN  PATENTS 

mentioned  in  preamble  to  specification,  111. 
operation  on  novelty,  55. 

FOBFETTUBE 

not  favored  in  the  law,  108. 
of  licenses,  308,  309. 

FOBM 

as  affecting  questions  of  infringement,  363-368. 
as  affecting  questions  of  invention,  41. 

FBAUD 

in  granting  or  procuring  letters  patent,  321. 
in  granting  or  procuring  Patent-Office  extensions,  269. 
in  granting  or  procuring  reissues,  222. 

remedy  for,  in  granting  or  procuring  letters  patent,  extensions,  or  re- 
sues,  321-323. 

FUNCTIONS 

considered  in  respect  of  equivalents,  352. 
good,  in  wrong  places,  84. 
not  subjects  of  patents,  4. 


INDEX.  GOT 

FUNCTIONS—  Continued. 

performed  in  "  substantially  the  same  way,"  353. 

thought  by  some  to  be  good,  and  by  others  to  be  evil,  83. 

•which  sometimes  work  good,  and  sometimes  evil,  82. 
GOVERNMENT  OF  THE  UNITED  STATES 

has  no  special  rights  to  patented  inventions,  157. 
GRANTS 

of  rights  under  letters  patent,  287. 

operation  of,  extra- territorially,  288. 

GRANTEES 

need  not  join  in  surrender  and  reissue,  252. 
rights  of,  under  reissues,  253. 

GEIEB,  JUSTICE, 

opinion  on  force  of  commissioner's  decision  in  reissue  cases,  223. 
opinion  on  mode  of  operation,  344. 
opinion  on  oath  to  application,  123. 
opinion  on  subjects  of  patents,  17. 

HALL,  JUDGE, 

opinion  on  abandonment  of  patents,  107. 
opinion  on  witness  fees  taxable  as  costs,  548. 

HAMILTON,  ALEXANDEB, 

opinion  on  jurisdiction  of  State  courts,  381. 
HAELAN,  JUSTICE, 

opinion  on  construction  of  the  national  statute  of  limitation,  475. 

HEABING, 

final,  633. 

interlocutory,  633. 

of  motions  for  preliminary  injunctions,  662. 

HUGHES,  JUDGE, 

opinion  on  actions  of  assumpsit  for  infringement  of  patents,  419. 
opinion  on  construction  of  the  national  statute  of  limitation,  475. 

HUNT,  JUSTICE, 

opinion  on  bill  seeking  a  decree  of  non-infringement,  585. 

IDENTITY, 

degree  of,  involved  in  constructive  abandonment,  98. 

lack  of,  between  application  and  letters  patent,  how  pleaded  in  actionx 

at  law,  450. 
lack  of,  between  application  and  letters  patent,  how  pleaded  in  actions 

in  equity,  603. 

lack  of,  between  application  and  letters  patent,  how  proven,  514. 
lack  of,  between  letters  patent  and  reissue,  how  pleaded  in  actions  at 

law,  459. 


G98  INDEX. 

IDENTITY —  Continued. 

lack  of,  between  letters  patent  and  reissue,  how  pleaded  in  actions 

in  equity,  612. 
lack  of,  between  letters  patent  and  reissue,  how  proven,  524. 

IGNOEANCE 

of  anticipating  matter  never  averts  negation  of  novelty,  73. 
•of  letters  patent  never  averts  judgment  or  decree  for  infringement, 
377,  569. 

INADVEETENCE 

causing  reissuable  faults,  220. 

INADVEETENCE,  ACCIDENT,  AND  MISTAKE, 
absence  of,  how  proven,  522. 

IMPBOVEMENT 

a  subject  of  a  patent.  1. 

may  or  may  not  be  invention,  16. 

sorts  of,  16. 

INFEINGEMENT, 

absence  of,  how  proved,  532. 

beyond  the  jurisdiction  of  the  court,  676. 

by  making,  damages  for,  564. 

by  making  and  selling,  damages  for,  561. 

by  making  and  selling,  profits  derived  from,  717-723,  735. 

by  making  and  using,  damages  for,  561. 

by  selling,  damages  for,  563. 

by  selling,  profits  derived  from,  724. 

by  using,  damages  for,  561. 

by  using,  profits  derived  from,  725-734. 

by  making,  by  using,  and  by  selling,  suable  in  one  action,  417. 

cessation  of,  no  defence  to  a  motion  for  a  preliminary  injunction, 

676,  701. 
committed   in  the  Northern  District    of  New  York,  not  suable    in 

Southern  District  of  that  State,  390. 
denial  of,  how  pleaded  in  actions  at  law,  466. 
denial  of,  how  pleaded  in  actions  in  equity,  620. 
different  sorts  of,  how  treated  by  masters,  743. 
doubtful  questions  of,  not  decided  on  motions  for  attachment,  708. 
extent  of,  ascertained  by  masters,  742. 
how  stated  in  bills  of  complaint,  579. 
how  stated  in  declarations,  434,  435. 
ignorance  no  excuse  for,  377. 
of  design  patents,  375. 

of  patents  for  compositions  of  matter,  369-372. 
of  patents,  involves  infringement  of  claims,  339. 
of  process  patents,  335-338. 
of  primary  patents,  360,  362. 


INDEX.  699 

INFBTNGEMENT —  Continued. 

of  secondary  patents,  361,  362. 

of  two  or  more  terms  of  a  patent,  suable  in  one  action,  417, 
option  to  sue  for  infringement  or  for  royalty,  309. 
partly  unprofitable,  713. 
plaintiff's  evidence  of,  497-501. 

proof  of,  or  of  danger  of,  on  motions  for  preliminary  injunctions,  676. 
questions  of,  as  affected  by  addition,  347. 
questions  of,  as  affected  by  change  of  form,  363-368. 
questions  of,  as  affected  by  mode  of  operation,  341-346. 
questions  of,  as  affected  by  omission,  349. 
questions  of,  as  affected  by  rearrangement  of  parts,  348.. 
questions  of,  as  affected  by  results,  340. 
questions  of,  as  affected  by  substitution  of  parts.  350. 
questions  of,  as  affected  by  utility,  376. 

questions  of,  not  to  be  taken  to  Supreme  Court  on  certificates  of  di- 
vision of  opinion,  657. 
repeated,  suable  on,  in  one  action,  435. 

INJUNCTIONS, 

acquiescence  of  the  public  as  foundation  for  a  preliminary,  667-670. 

against  corporations,  upon  what  persons  binding,  708. 

averted  by  proof  of  estoppel,  683. 

averted  by  proof  of  expiration  or  repeal  of  patent,  681. 

averted  by  proof  of  laches,  684. 

averted  by  proof  of  license,  682. 

averted  by  proof  that  patent  is  void,  679,  680. 

bills  for,  660. 

bonds  pending  motions  for  preliminary,  663. 

consent  decree,  when  foundation  for  preliminary,  672,  709. 

decree  pro  confesso  as  a  foundation  for  a  preliminary,  671. 

defences  to  preliminary,  when  set  up  in  answer,  694. 

defendant's  admission  of  validity,  when  foundation  for  preliminary, 

673. 

description  in  preliminary,  702. 
dissolution  of  permanent,  704. 
dissolution  of  preliminary,  659. 
duration  of,  in  general,  706. 

duration  of,  when  granted  by  district  judge  in  vacation,  707. 
foundation  of  right  to  preliminary,  665. 
hearing  of  motions  for  preliminary.  662. 
imperative  character  of  right  to  preliminary,  685. 
interference  decision,  when  foundation  for  preliminary,  674. 
jurisdiction  to  grant,  658. 
motions  for  preliminary,  662. 
motions  to  dissolve  preliminary,  692-694. 
motions  to  reinstate  dissolved  preliminary,  695. 


TOO  INDEX. 

INJUNCTIONS —  Continued. 

motions  to  dissolve  reinstated  preliminary,  695. 

motions  for  attachment  for  violation  of,  708,  709. 

not  averted  by  cessation  of  infringement,  701. 

not  averted  by  existence  of  remedy  at  law,  689. 

not  granted  on  trivial  infringements,  705. 

not  granted  to  restrain  complainants  from  suing  third  parties,  705. 

not  granted  to  restrain  issue  of  letters  patent,  134. 

notice  of  motions  for  preliminary,  661. 

obedience  to,  insisted  upon,  696. 

on  bills  in  interference  actions,  319. 

penalty  for  disobeying,  710. 

permanent,  when  granted,  697. 

permanent,  when  postponed,  702. 

permanent,  when  refused,  698-700. 

permanent,  when  suspended  pending  appeal,  654,  703. 

preliminary,  659. 

preliminary,  when  averted  by  proof  that  acquiescence  was  collusive, 

680. 

preliminary,  when  based  on  prior  adjudications,  666. 
proof  of  complainant's  title  a  necessary  element  in  right  to,  675. 
proof  of  infringement,  or  danger  of  infringement,  a  necessary  element 

in  right  to,  676. 

suspension  of,  pending  appeal,  654,  703. 
suspension  of  motions  for  preliminary,  663. 

temporary  restraining  order  pending  motion  for  preliminary,  664. 
to  restrain  unauthorized  marking  of  patented  articles,  333. 
violations  of,  how  punished,  710. 
void  when  granted  without  jurisdiction,  696. 
when  granted  after  expiration  of  patent,  698. 
when  granted  pro  confesso,  690. 
writ  of,  708. 

INOPEKATIVKNESS 

a  cause  of  reissuability,  216,  218. 

INSTEUCTIONS, 

exceptions  to,  553,  554. 
how  reviewed,  552. 
to  be  given  in  writing,  537. 
what  must  embody,  537. 

INSUFFICIENT, 

meaning  of  the  word  in  the  law  of  reissues,  217. 

INTEBEST 

on  damages,  571. 
on  profits,  736-738. 


INDEX.  7(>1 

INTERFERENCES 

defined,  140. 

number  of  possible,  141. 

when  decision  in,  is  a  foundation  for  a  preliminary  injunction,  674. 

INTERFERENCE  ACTIONS  IN  EQUITY 
authorized,  316. 
decrees  in,  320. 

INTERFERING  PATENTS, 

causes  of,  315. 

defined,  315. 
INVALIDITY 

when  a  cause  of  reissuability,  216. 

INVENTION 

absent  from  mere  aggregation,  32. 

absent  from  mere  change  in  degree,  31. 

absent  from  mere  duplication,  34. 

absent  from  mere  enlargement,  30. 

absent  from  mere  improvement  in  workmanship ,  27. 

absent  from  mere  omission  of  parts,  35. 

absent  from  mere  substitution  of  equivalents,  36. 

absent  from  mere  substitution  of  superior  materials,  28. 

absent  from  new  combination  of  old  devices  having  no  new  mode  of 

operation,  37. 

absent  from  new  use  of  old  process  or  thing,  38. 
absent  from  product  of  mere  mechanical  skill,  25. 
evidence  of  want  of,  505. 
form  no  criterion  of,  41. 
necessary  to  patentability,  23. 
questions  of  presence  or  absence  of,  are  determined  by  negative  rules, 

24. 

questions  of  presence  or  absence  of,  are  questions  of  fact,  42. 
questions  of  presence  or  absence  of,  are  sometimes  affected  by  the 

state  of  the  art,  43. 
questions  of  presence  or  absence  of,  are  sometimes  determined  by 

comparative  xitility,  40. 

want  of,  how  pleaded,  in  actions  at  law,  446. 
want  of,  how  pleaded  in  actions  in  equity,  599. 
want  of,  how  proven,  505. 

JOINT  INFRINGEMENT, 

facts  which  constitute,  407. 
profits  recoverable  in  cases  of,  712. 

JOINT  INFRINGEBS 

as  defendants,  406. 
contribution  between,  531. 
releases  to  one  of  several,  531. 


702  INDEX. 

JOINT  INVENTION 

distinguished  from  sole  invention,  45,  46. 
distinguished  from  suggestions  to  sole  inventors,  47. 
for  sole  patent,  how  pleaded  in  actions  at  law,  452. 
for  sole  patent,  how  pleaded  in  actions  in  equity,  605. 
for  sole  patent,  how  proven,  516. 
for  sole  patent,  voids  the  latter,  50. 

JOINT  PATENT 

for  sole  invention,  how  pleaded  in  actions  at  law,  452. 
for  sole  invention,  how  pleaded  in  actions  in  equity,  605. 
for  sole  invention,  how  proven,  517. 
for  sole  invention,  voids  the  former,  51. 

JOINT  TENANCY, 

how  severed,  if  it  exists,  293. 

JUDGES 

directing  juries  to  find  verdicts  for  defendants,  536. 
trying  actions  at  law  without  juries,  540. 

JUDICIAL  LEGISLATION, 
so  called,  634. 

JUDICIAL  NOTICE 

in  respect  of  pleadings,  445. 

when  taking  the  place  of  evidence,  505,  599. 

JUDGMENTS 

by  default  pleadable  as  res  judicata,  468. 

for  amount  larger  than  verdict,  finding,  or  report,  542. 

when  and  how  entered,  542. 

• 
JUNIOR  PATENT, 

conformity  to,  of  defendant's  doings,  relevant  to  motions  for  prelimi- 
nary injunctions,  687. 

conformity  to,  of  defendant's  doings,  relevant  to  trial  of  issue  of  in- 
fringement in  action  at  law,  532. 

JURISDICTION, 

consent  of  parties  cannot  confer,  390. 

in  interference  actions,  316. 

in  qui  tarn  actions,  331. 

of  Commissioner  of  Patents,  to  issue  letters  patent,  148,  178. 

of  Commissioner  of  Patents,  to  grant  extensions,  266. 

of  Commissioner  of  Patents,  to  grant  reissues,  211-225. 

of  Circuit  Courts  over  actions  for  infringement  against  agents  of  the 

United  States  government,  393. 
of  Court  of  Claims  in  patent  cases,  391,  392. 
of  courts  of  first  resort  in  patent  cases,  379. 
of  equity  in  patent  cases,  572,  573,  592,  593,  658,  689. 


INDEX.  7<i:j 

JURISDICTION —  Continued. 

of  individual  Federal  courts  of  first  resort  in  patent  cases,  389. 

of  State  courts  to  enforce  or  set  aside  contracts  relevant  to  patents 

388. 

original  in  patent  cases,  379. 
question  of  jurisdiction  of  State  courts  in  infringement  cases,  380- 

387. 

JURIES, 

instructions  to,  537. 

•when  directed  to  find  a  verdict  for  the  defendant,  536. 

JUBT  TRIALS, 

in  actions  at  law,  488. 
in  actions  in  equity,  632. 

KENT,  CHANCELLOR, 

opinion  on  interest  on  profits,  738. 
opinion  on  jurisdiction  of  State  courts,  384. 

KNOWLEDGE, 

fund*of,  required  by  inventors,  48. 

in  foreign  country,  54. 

inventor  presumed  to  have,  of  state  of  the  art,  43. 

lack  of,  of  anticipating  matter,  on  the  part  of  patentees,  73. 

necessary  to  acquiescence,  312. 

of  patent,  not  necessary  to  constitute  infringement,  377. 

public,  works  no  constructive  abandonment,  100. 

what  must  include,  in  order  to  negative  novelty,  72. 

LACHES 

a  defence  in  equity,  591,  596. 

a  defence  to  a  motion  for  a  preliminary  injunction,  684. 

defence  of,  how  guarded  against,  597. 

how  set  up  as  a  defence,  597. 

working  abandonment  of  application  and  invention,  145. 

working  abandonment  of  invention,  91. 

LAPSE  OF  TIME 

•     before  applying  for  broadened  reissue,  226,  227. 
before  applying  for  reissue  not  broadened,  228. 

LAW  OF  THE  CIRCUIT, 

meaning  of  the  phrase,  634. 

LAWS  OF  NATURE 

not  subjects  of  patents,  2. 

LEAVITT,  JUDGE, 

opinion  on  force  of  Commissioner's  decision  in  reissue  cases,  2'J:t. 
4      opinion  on  witness  fees  taxable  as  costs,  548. 


704  INDEX. 

LESSOES 

of  infringing  machines,  as  defendants,  405. 

LETTERS  PATENT, 

apparently  in  force,  prima  facie  evidence  that  they  have  not  expired 

or  been  repealed,  494. 
as  documents,  172. 
bill  in  equity  to  compel  issue  of,  134. 
claims  of,  176,  177. 
constituents  of,  172. 
construction  of,  181. 
construction  of,  a  question  of  law,  189. 
constructive  notice  to  all  persons,  191. 
construed  according  to  contemporaneous  statutes,  188. 
construed  in  light  of  contemporaneous  construction  of  inventor,  187. 
construed  in  light  of  expert  testimony,  189. 
construed  in  light  of  the  state  of  the  art,  184. 
construed  with  proper  liberality,  185. 
construed  with  proper  strictness,  186. 
description  in,  affecting  constructions  of  claims,  182. 
errors  in,  when  fatal  to  validity  of,  172. 
granted  to  whom,  110,  171. 

how  affected  by  vague  description  or  claims,  178. 
how  construed  after  disclaimer,  207. 
how  set  out  in  declarations,  428. 
matters  of  public  record,  191. 

presumed  to  be  for  same  invention  as  application,  190. 
prima  facie  evidence  of  their  own  validity,  491. 
separate,  granted  for  different  parts  of  one  machine,  180. 
signed  by  whom,  172.  * 
surrender  of,  105. 
surreptitious  or  unjust  obtaining  of,  how  pleaded  in  actions  at  law, 

451. 
surreptitious  or  unjust  obtaining  of,  how  pleaded  in  actions  in  equity, 

604. 

the  description  in,  174,  175. 

valid  as  to  one  or  more  claims  while  void  as  to  the  residue,  177. 
when  may  cover  plurality  of  inventions,  180. 

LICENSES 

arising  from  acquiescence,  312. 

arising  from  estoppel,  312,  313. 

arising  from  recovery  of  damages  or  profits,  314. 

as  defences  to  motions  for  preliminary  injunctions,  682. 

assignability  of,  310. 

construction  of,  306. 

defined,  296. 

express,  with  implied  incidents,  297-301.  .  . 


INDEX.  703 

LICENSES— Continued. 

express,  without  implied  incidents,  300,  302. 

forfeiture  of,  308. 

from  one  of  several  mutual  owners,  305. 

how  pleaded  in  actions  at  law,  465. 

how  pleaded  in  actions  in  equity,  618. 

how  proven,  530. 

implied  from  conduct,  312. 

need  not  be  negatived  in  declarations,  434. 

need  not  be  negatived  in  plaintiff's  evidence  in  chief,  496. 

none  required  to  buy  specimens  of  patented  things,  299. 

notice  of,  304. 

purely  implied,  311. 

recording  of,  304. 

to  corporations,  310. 

to  one  of  several  joint  users,  305. 

to  partnerships,  310. 

written  or  oral,  303. 

LICENSEES, 

how  suing  for  infringement,  400. 

need  not  join  in  surrender  and  reissue,  252. 

of  one  of  several  mutual  owners,  294,  305 

when  evicted,  307. 

when  sued  as  infringer,  309. 

LIMITATION  OF  TIME, 

relevant  to  filing  bills  of  review,  651,  652. 
relevant  to  filing  bills  of  revivor,  627. 

LOVE,  JUDGE, 

opinion  on  construction  of  the  national  statute  of  limitation,  475. 
opinion  on  mode  of  operation,  343. 

LOWELL,  JUDGE, 

opinion  on  costs  in  cases  of  disclaimers,  205. 
opinions  on  invention,  27,  31,  37. 
opinion  on  novelty,  69. 

opinion  on    liability  of  officers,  directors,  and  stockholders  of  cor- 
porations for  corporate  infringement,  410. 
opinion  on  State  statutes  of  limitation,  477. 
opinion  on  subjects  of  patents,  6. 

MACHINES, 

claims  in  specifications  of,  117. 
defined,  16. 

distinguishable  from  manufactures,  19. 
subjects  of  patents,  1. 


706  INDEX. 

MAGISTRATES 

before  whom  oath  may  be  made  to  affidavits,  584. 
before  whom  oath  may  be  made  to  specifications,  122. 

MAKING 

more  than  two  years  before  application  for  letters  patent,  99. 

MANDAMUS, 

to  compel  Commissioner  of  Patents  to  allow  appeal,  132. 
when  not  grantable,  134. 

MANUFACTUBES, 

claims  in  specifications  of,  118. 

distinguishable  from  compositions  of  matter  and  from  machines,  19. 

patent-law  meaning  of  the  word,  17. 

subjects  of  patents,  1. 

MARKING  "PATENTED," 

making  or  selling  without,  how  far  a  defence  in  equity,  616. 
making  or  selling  without,  how  pleaded  in  actions  at  law,  463. 
making  or  selling  without,  how  pleaded  in  actions  in  equity,  616. 
making  or  selling  without,  how  proven,  528. 

making  or  selling  without,  need  not  be  negatived  by  plaintiff' s  evi- 
dence in  chief,  496. 

MABEIED  WOMEN 

as  defendants  in  patent  cases,  402. 

MASTERS  IN  CHANCERY, 

draft  reports  of,  744. 

exceptions  to  reports  of,  745-749. 

final  reports  of,  750. 

hearing  in  equity  cases  before,  632,  643. 

infringement  investigated  by,  in  point  of  extent,  742. 

infringement  investigated  by,  in  point  of  varieties,  743. 

proceedings  before,  739-743. 

system  of  practice  relevant  to  findings  of,  750. 

taking  account  before,  when  stopped,  648. 

MATTHEWS,  JUSTICE, 

opinion  on  invention,  32. 

MCCRARY,  JUDGE, 

opinion    on  mode  of  operation,  343. 

McKiNNON,  JUDGE, 

opinion  on  novelty,  -'69. 

MCLEAN,  JUSTICE, 

opinion  on  force  of  Commissioner's  decision  in  reissue  cases,  222. 
opinion  on  witness  if  ees  taxable  as  costs,  548. 


INDEX.  707 

MECHANIC-EMPLOYES, 

as  defendants  in  actions  for  infringement,  403. 

MENTAL  CONCEPTIONS, 

inventions  do  not  date  from,  70. 

MILLER,  JUSTICE, 

opinion  on  patents,  153. 

MILLER  v.  Bit  ASS  Co., 
defence  in,  226. 

defence  in,  how  pleaded  in  actions  at  law,  458. 
defence  in,  how  pleaded  in  actions  in  equity,  611. 
defence  in,  how  proven,  523. 

MINORS 

as  defendants  in  actions  for  infringement,  402. 

MISTAKE, 

causing  reissuable  faults,  220. 

justifying  disclaimers,  195,  196. 

remedy  for  issuing  or  obtaining  patent  through,  321. 

MODE  OF  OPERATION, 

as  affecting  infringement,  341-346. 
described  in  specifications,  111. 
novelty  of,  when  necessary  to  invention,  37. 
when  changed  by  omission  of  parts,  35. 

MODELS, 

amendment  of,  138,  214. 

making  of,  may  constitute  birth  of  subsequently  patented  inven- 
tions, 70. 

never  negative  novelty,  61. 
relevant  to  basing  reissues  thereon,  238. 
when  required,  127. 

MONTHS, 

lunar,  not  calendar,  125. 

MOTIONS 

alleging  non-jurisdiction  of  equity,  594. 

for  attachments.  708-710. 

for  preliminary  injunctions,  659-663. 

to  dissolve  preliminary  injunctions,  659,  692-694. 

to  reinstate  dissolved  preliminary  injunctions,  695. 

to  dissolve  reinstated  preliminary  injunctions,  695. 

to  strike  evidence  from  the  record,  600. 

KOWBT  v.  WHITNEY, 

the  rule  of  profits  in,  725-735. 


708  INDEX. 

NELSON,  JUSTICE, 

opinion  on  injunctions  in  interference  actions,  319. 
opinion  on  interest  on  profits,  737. 
opinion  on  joint  invention,  46. 

opinion  on  liability  of  officers,  directors,  and  stockholders  of  corpora- 
tions, for  corporate  infringement,  410. 

NEW  MATTER, 

in  reissues,  214. 

meaning  of  the  phrase,  240. 

NEW  TBIALS, 

in  actions  at  law  for  infringement,  539. 

NEW  USE, 

of  old  thing,  not  invention,  38. 

NIXON,  JUDGE, 

opinion  on  duration  of  patents  for  inventions  previously  patented  in. 

a  foreign  country,  163. 
opinion  on  force  of  Commissioner's  decision  in  reissue  cases,  223. 

NOTICE, 

constructive,  of  letters-patent,  191. 

of  licenses,  304. 

of  motions  for  preliminary  injunctions,  661. 

of  special  matter,  444. 

protecting  prior  unrecorded  assignment,  281. 

NOVELTY, 

as  affected  by  another  patent  to  same  inventor  for  same  invention,  69. 

as  affected  by  prior  abandoned  experiments,  63. 

defined,  53. 

depends  on  questions  of  fact,  75. 

evidence  of  want  of,  506-508. 

must  be  put  in  issue  in  declarations,  424. 

necessary  to  patentability,  52. 

negatived  by  prior  knowledge  and  use  in  this  country,  71. 

negatived  by  prior  making  in  this  country,  72. 

negatived  by  prior  patent,  54,  57. 

negatived  by  prior  printed  publication,  54,  55,  57. 

negation  of,  not  averted  by  ignorance  of  anticipating  matter,  73. 

negation  of,  not  averted  by  producing  old  thing  from  new  source,  74. 

not  negatived  by  antiquity  of  parts,  66. 

not  negatived  by  anything  neither  designed,  npparently  adapted,  nor 

actually  used,  to  perform  the  same  function,  68. 

not  negatived  by  anything  occurring  after  the  date  of  the  invention,  69. 
not  negatived  by  description  in  prior  application,  60. 
not  negatived  by  incomplete  prior  description,  57. 
not  negatived  by  prior  abandoned  application,  58.      *• 


INDEX.  7l)«> 

NOVELTY —  Continued. 

not  negatived  by  prior  accidental  and  not  understood  production.  67. 
not  negatived  by  prior  description  of  substantially  different  thing  or 

process,  57. 

not  negatived  by  prior  model,  61. 
not  negatived  by  prior  private  foreign  patent,  55. 
not  negatived  by  prior  unenrolled  English  patent,  55. 
not  negatived  by  prior  use  in  foreign  country,  54. 
not  negatived  by  prior  useless  process  or  thing,  65. 
not  negatived  by  substantially  different  prior  process  or  thing,  62. 
not  negatived  by  unpublished  drawings,  61. 
of  designs,  64. 

predicated  of  everything  which  is  absolutely  new,  52. 
predicated  of  some  things  not  absolutely  new,  53. 
want  of,  how  pleaded  in  actions  at  law,  447. 
want  of,,  how  pleaded  in  actions  in  equity,  600. 
want  of,  how  proven,  76,  506-508. 
want  of,  how  rebutted,  509,  510. 

OATHS, 

affirmations  substituted  for,  124. 

effect  of  waiving,  in  bills,  581. 

to  answers,  581. 

to  bills  in  equity,  584. 

to  pleas  in  equity,  589. 

to  specifications,  122,  123. 

OBITER  DICTA, 

weight  of,  537. 
OBJECTIONS, 

to  evidence,  535. 

to  evidence  before  masters,  741. 
ICEKS  OF  CORPORATIONS, 

as  defendants,  410,  411,  413,  415. 

'      OSSION, 

as  affecting  infringment,  338,  349,  369. 

as  affecting  invention,  35. 

as  affecting  sameness  of  invention,  244. 

i  SALE, 

consent  to  being,  more  than  two  years  before  application,  102. 
in  foreign  country  more  than  two  years  before  application,  101. 
more  than  two  years  before  application,  93. 
patent  law  meaning  of  the  phrase,  96. 

TION, 

of  patentee-licensor,  to  sue  for  royalty  or  for  infringment,  309. 

JAL  DESCRIPTIONS, 

whether  fixing  dates  of  subsequently  patented  invention,  70. 


710  INDEX. 

OWNEBS  IN  COMMON, 

as  plaintiffs  or  complainants,  399. 

must  join  in  surrender  and  reissue,  252. 
PABTTTION, 

of  patent  rights,  295. 
PARTNERSHIPS, 

as  defendants,  408. 

licenses  to,  310. 
PATENTABILITY, 

prerequisites  of,  6,  23. 
PATENTS, 

alleged  abandonment  of,  106,  107. 

beginning  of  terms  of,  170. 

consideration  given  for,  153. 

duration  of,  162-169. 

expiration  of,  before  end  of  apparent  term,  how  pleaded  in  actions  at 
law,  462. 

expiration  of,  before  end  of  apparent  term,  how  pleaded  in  actions  in 
equity,  615. 

expiration  of,  before  end  of  apparent  term,  how  proven,  527. 

founded  upon  what,  150. 

granted  for  what  subjects,  1. 

interfering,  315. 

not  odious  monopolies,  153. 

plurality  of,  when  suable  on  in  one  action,  417. 

repeal  of,  321. 

territory  covered  by,  160. 

when  dated,  170. 

PATENT  LAWS, 

the  sources  of,  537,  634. 
PATENT  EIGHTS, 

absolute,  not  qualified,  154. 

dignity  of,  152. 

exclusive  of  government,  157. 

not  subject  to  common  law  execution,  156. 

property,  151. 

relevant  to  specimens  made  or  purchased  before  application  for,  158. 

subject  to  creditors'  bills,  156. 
PATENT  OFFICE  RULES, 

founded  on  what,  109. 

governing  applications,  109. 

relevant  to  applications,  109. 

relevant  to  drawings,  126. 

relevant  to  interferences,  140. 

relevant  to  models,  127. 

relevant  to  specimens  of  compositions  of  matter,  128. 


INDEX.  711 

PENALTIES, 

for  disobedience  of  injunctions,  710. 
in  qui  tarn  actions,  329. 

PERPETUATION  op  TESTIMONY, 

bills  for,  585. 
PETITIONS, 

for  letters  patent,  110. 
PLAINTIFFS, 

costs  recoverable  by,  543. 

in  actions  at  law  for  infringement,  394-400. 

in  qui  tarn  actions,  330. 
PLEAS  IN  ACTIONS  AT  LAW, 

bad  in  part,  bad  altogether,  482. 

demttrrable,  when,  484. 

dilatory,  439. 

in  bar,  440. 

of  actual  abandonment,  449. 

of  constructive  abandonment,  449. ' 

of  deceptively  lacking  or  excessive  specification,  453. 

of  estoppel,  467. 

of  expiration  of  patent,  462. 

of  indistinct  claims,  455. 

of  insufficient  specification,  454. 

of  joint  invention  for  sole  patent,  452. 

of  joint  patent  for  sole  invention,  452. 

of  license,  465. 

of  making  or  selling  without  marking  "  patented,"  463. 

of  non-infringement,  466. 

of  release,  465. 

of  repeal  of  patent,  461. 

of  rule  in  Miller  v.  Brass  Co. ,  458. 

of  statutes  of  limitation,  471. 

of  surreptitious  or  unjust  obtaining  of  patent,  451. 

of  unreasonable  delay  to  file  needed  disclaimer,  456. 

of  want  of  being  a  statutory  subject  of  a  patent  ,  446. 

of  want  of  identity  between  application  and  letters  patent,  450. 

of  want  of  identity  between  letters  patent  and  reissue,  469. 

of  want  of  invention,  446. 

of  want  of  novelty,  447. 

of  want  of  reissuability,  457. 

of  want  of  statutory  application  for  extension,  460. 

of  want  of  title,  464. 

of  want  of  utility,  448. 
FLEAS  IN  ACTIONS  IN  EQOTTY, 

found  bad  in  law  590. 

found  good  in  law,  and  true  in  fact,  590,  649. 


712 


INDEX. 


PLEAS  IN  ACTIONS  IN  EQUITY — Continued. 

found  good  in  law,  and  untrue  in  fact,  590. 

proceedings  on,  590. 

replications  to,  590. 

to  bills  in  the  nature  of  supplemental  bills,  631. 

to  original  bills,  588,  589. 

to  supplemental  bills,  631. 

POLICE  POWER, 

over  specimens  of  patented  things,  155. 

PRACTICE, 

in  actions  at  law,  489. 
in  actions  in  equity,  489. 
on  bills  to  repeal  patents,  323. 
on  masters'  findings,  750. 

PRAYERS, 

for  preliminary  injunctions,  660. 
for  process,  582. 
for  relief,  580. 

PREAMBLE, 

of  specifications,  111,  112. 

PRESUMPTIONS, 

that  inventors  borrowed  whatever  in  their  inventions  was  old,  43. 
that  letters  patent  are  for  same  inventions  as  applications,  190. 
that  reissues  are  for  same  inventions  as  originals,  243. 

PRIMARY  INVENTIONS, 
defined,  359. 

PRIMARY  PATENTS, 

how  infringed,  360,  362. 

PRINCIPLE, 

of  invention,  how  explained  in  specifications,  115. 

PRINCIPLES, 

distinguished  from  processes,  7-15. 
not  patentable,  2,  7. 

PRINTED  PUBLICATIONS, 
defined,  56. 

PRIOR  ABANDONED  EXPERIMENTS, 
as  affecting  novelty,  63. 

PRIOB  ADJUDICATION, 

a  foundation  for  a  preliminary  injunction,  665,  666. 

PRIOR  MAKING, 

may  negative  novelty,  72. 


INDEX.  71;; 

PRIOR  FEINTED  PUBLICATION, 
negatives  novelty,  56. 

PKIOB  PBIVATE  FOREIGN  PATENT, 
never  negatives  novelty,  55. 

PRIOR  PUBLIC  PATENT, 

negatives  novelty,  55. 

PRIOR  UNENROLLED  ENGLISH  PATENT, 
never  negatives  novelty,  55. 

PRIOR  USE, 

in  foreign  country  never  negatives  novelty,  54. 
in  this  country  negatives  novelty,  71. 

PRIORITY, 

question  of,  between  rival  inventors,  how  settled,  140-142,  315-320. 

PROCESSES, 

claims  for,  how  construed,  186. 
distinguished  from  principles,  7-15. 
patent-law  meaning  of  the  word,  3-6. 

PROCESS  PATENTS, 

claims  in  specifications  of,  120. 

exclusive  of  those  who  practised  the  process  after  invention  and  be- 
fore application,  159. 
infringed,  how,  335-338. 

PROFEHT, 

in  declarations  and  bills  of  complaint,  433,  579. 

PROFITS, 

account  of,  covering  what  time,  714. 

accruing  before  surrender  and  reissue,  231. 

decrees  for,  573. 

defendants',  recoverable  in  equity,  711. 

evidence  of,  636,  740. 

from  infringement  by  making  and  selling,  717-723,  736. 

from  infringement  by  selling,  724. 

from  infringement  by  using,  725-734. 

generic  rule  for  ascertaining,  716. 

interest  on,  736-738. 

not  measured  by  damages,  716. 

proceedings  for  ascertaining,  739-750. 

recoverable  in  cases  of  joint  infringement,  712. 

recoverable  in  cases  where  infringement  was  partly  unprofitable,  713. 

PROPORTION, 

change  of  as  affecting  infringement  of  patent  for  composition  of  mat- 
ter, 373. 


714  INDEX. 

PUBLIC  KNOWLEDGE, 

after  invention  and  prior  to  application,  100. 

PUBLIC  USE, 

consent  to,  more  than  two  years  before  application,  102. 
more  than  two  years  before  application,  93. 
patent-law  meaning  of  the  phrase,  94,  95. 

QUESTIONS  OF  FACT, 

abandonment,  108. 

absence  or  presence  of  invention,  42. 

infringement,  339. 

novelty,  75. 

sufficiency  of  specification,  179. 

Supreme  Court  decisions  on,  635. 

QUESTIONS  OF  LAW, 

arising  on  hearings  in  equity,  634. 
arising  on  trials  at  law,  537. 
construction  of  letters  patent,  189. 

Qui  TAM  ACTIONS, 

declarations  in,  332. 
form  of,  332. 
functions  of,  324. 
penalties  in,  329. 
plaintiffs  in,  330. 
writs  of  error  in,  334. 
wrongs  remedied  by,  325-327. 

RAILWAY  Co.  v.  SAYLES, 

rule  in,  184,  359-362. 

REABBANGEMENT, 

of  parts  as  affecting  infringement,  348. 

RECEIVES, 

of  court,  invoking  licenses  to  insolvent,  310. 

KECOBD, 

letters  patent,  matter  of,  191. 

KECOBDING, 

of  assignments,  281. 
of  grants,  287. 
of  licenses,  304. 

KECOVEBY, 

of  damages  or  profits  working  license,  314. 

REFEBEE, 

trial  by,  541. 


INDEX.  7  1  0 

REHEARING, 

effect  of,  on  accounting,  648. 

for  matter  apparent  on  the  record,  646. 

on  account  of  newly  discovered  evidence,  647. 

petitions  for,  645. 

REINVENTION, 

what  right  conferred  by,  158. 

REISSUES, 

applications  for,  214. 

beginning  of  history  of,  210. 

broadened,  219,  226,  227. 

cannot  cover  subject  of  prior  disclaimer,  241. 

claims  of,  disclaimed,  201. 

construed  liberally,  248. 

covered  by  assignment  of  original,  250. 

covering  things  made  before  date  of,  254. 

how  stated  in  declarations,  429. 

invalidity  of,  for  want  of  reissuability  of  original,  how  pleaded  in 
actions  at  law,  457. 

invalidity  of,  for  want  of  reissuability  of  original,  how  pleaded  in  ac- 
tions in  equity,  610. 

invalidity  of,  for  want  of  reissuability  of  original,  how  proven,  522. 

legal  effect  of,  254. 

must  be  for  same  invention  as  original,  233. 

mutual  owners  must  join  in  application  for,  252. 

need  not  be  confined  to  claims  of  original,  235. 

new  matter  in,  214. 

not  affected  by  more  than  two  years'  prior  public  use  or  sale,  229. 

not  broadened,  228. 

not  granted  after  expiration  of  original,  232. 

not  grantable  for  matter  not  described  or  shown  in  original,  234. 

novelty  of,  dating  from  when,  254. 

of  reissues,  232. 

prima-facie  evidence  of  their  own  validity,  492. 

relevant  to  basing  on  models,  238. 

remedies  for  refusal  to  allow,  214. 

rights  of  grantees  under,  253. 

to  assignees,  212,.  214,  250,  252. 

to  executors  or  administrators,  250. 

to  one  of  several  executors,  251. 

statutory  foundation  of,  211-215. 

subjects  of,  216. 

substituting  equivalents  in,  247. 

under  the  statute  of  1832,  211. 

under  Jhe  statute  of  1836,  212. 

under  the  statute  of  1837,  213. 


716  INDEX. 

REISSUES —  Continued. 

under  the  statute  of  1870,  214. 

under  the  Revised  Statutes,  215. 

void  in  part  and  valid  in  part,  249. 

when  may  claim  single  device  shown,  but  not  separately  claimed  in  the 

original,  246. 
when  may  claim  sub-combination  shown,  but  not  described  in  the 

original,  245. 
where  there  is  neither  model  nor  drawing,  214. 

REJOINDEBS, 

bad  in  part,  bad  altogether,  482. 

function  of,  in  actions  at  law  for  infringement,  478,  480. 

RELEASES, 

how  pleaded  in  actions  at  law,  465. 

how  pleaded  in  actions  in  equity,  619. 

how  proven,  531. 

need  not  be  negatived  in  plaintiff's  evidence  in  chief,  496. 

to  one  of  several  joint  infringers,  531. 

REMEDIES, 

for  infringement,  where  treated  in  this  book,  378. 

REPEAL  OF  PATENTS, 

for  what  cause  had,  321. 

in  what  courts  obtainable,  322,  323. 

how  pleaded  in  actions  at  law,  461. 

how  pleaded  in  actions  in  equity,  614. 

how  proven,  526. 

practice  in  cases  of  bills  for,  323. 

REPLICATIONS  IN  ACTIONS  AT  LAW, 

bad  in  part,  bad  altogether,  482. 
function  of,  in  patent  cases,  478-480. 
when  demurrable  in  patent  cases,  485. 

REPLICATIONS  IN  ACTIONS  IN  EQUITY, 
to  answers,  623. 
to  pleas,  590. 

REPOETS, 

exceptions  to  masters',  745-749. 

masters'  draft,  744. 

masters'  final,  750. 
RES  JUDICATA, 

foundation,  limitations,  and  operation  of  the  doctrine  of,  468. 

how  pleaded  in  actions  at  law,  470. 

how  pleaded  in  actions  in  equity,  621. 

how  proven,  533. 

in  interferences,  141,  142. 


INDEX.  71,' 

RESULT, 

as  affecting  infringement,  340. 

necessary  to  utility,  77. 
RIGHTS, 

kin,ds  of,  in  patented  inventions,  155. 

of  inventors,  patentees,  etc.,  where  treated  in  this  book,  378 
RIGHTS  or  ACTION, 

assignment  of,  277. 

assignment  of,  how  protected  from  subsequent  purchasers,  281. 
ROOT  v.  RAILWAY  Co. , 

,     rule  in,  572,  592,  593. 
ROYALTIES, 

as  measures  of  damages,  556-558. 

established  rate  of,  how  affecting  right  to  preliminary  injunction,  686. 

for  making,  564. 

for  making  and  using,  no  criterion  of  damages  for  making  and  selling, 
or  vice  versa,  561. 

of  plaintiff,  no  measure  of  recoverable  profits,  716. 

option  of  patentee-licensor  to  sue  for,  or  for  infringement,  309. 

regard  to  proportion,  in  measuring  damages  by,  562. 

reserved  on  sale  of  patents,  no  measure  of  damages,  560. 

SAME  INVENTION, 

as  affected  by  omission  of  parts,  244. 

how  disproved,  243. 

implies  sameness  with  original  and  all  former  reissues,  242. 

letters  patent  must  be  for  same  as  applications,  138,  440,  450,  514,  603. 

meaning  of  the  phrase,  234-239. 

presumption  of,  190,  243. 

reissues  must  be  for  same  as  originals,  233,  440,  459,  524.  612. 

SAWYEB,  JUDGE, 

opinion  of,  on  witness  fees  as  taxable  costs,  548. 

SECONDARY  INVENTIONS, 

defined,  359. 

how  infringed,  361,  362. 
SHEPLEY,  JUDGE, 

opinion  of,  on  repeal  of  patents,  322. 

opinion  of,  on  State  statutes  of  limitation,  477. 

opinion  of,  on  substitution  of  ingredients  in  compositions  of  matter, 

371. 
SHIPMAN,  JUDGE  NATHANIEL, 

opinion  of,  on  decree  where  disclaimer  is  found  necessary.  300. 

opinion  of,  on  duration  of  patents  for  inventions  previoualy  patented 
in  a  foreign  country,  167. 

opinion  of,  on  invention,  29. 

opinion  of,  on  novelty,  65. 


718  INDEX. 

SHIPMAN,  JUDGE  W.  D., 

opinion  of,  on  indistinctness  of  claims,  177. 

opinion  of,  on  liability  of  officers,  directors,  and  stockholders  of  cor- 
porations for  corporate  infringement,  410. 
opinion  of,  on  proceedings  before  masters,  741. 

SHIPS, 

American,  practice  of  patented  invention  on  board  of,  on  high  seas, 

161. 

foreign,  use  of  patented  invention  on  board  of,  in  United  States  ports, 
161. 

SHIKAS,  JUDGE, 

opinion  of,  on  mode  of  operation,  343. 

SIGNATURES, 

to  drawings,  126. 

to  specifications,  111,  121. 

SlMILITER, 

function  and  importance  of,  481. 

SKILFUL  MECHANIC, 

meaning  of  the  phrase,  57. 

SOLE  INVENTION, 

distinguished  from  joint  invention,  45,  46. 

for  joint  patent,  51. 

not  inconsistent  with  received  mechanical  assistance,  49. 

not  inconsistent  with  specially  sought  information,  48. 

SPECIAL  PLEADING, 

ancient  function  of,  442. 

SPECIFICATION, 

claims  the  operative  parts  of,  219. 

constituents  of,  111. 

deceitfully  lacking  or  excessive,  how  pleaded  in  actions  at  law,  453. 

deceitfully  lacking  or  excessive,  how  pleaded  in  actions  of  equity, 

606. 

deceitfully  lacking  or  excessive,  how  proven  to  be,  518. 
insufficient,  how  pleaded  in  actions  at  law,  454. 
insufficient,  how  pleaded  in  actions  in  equity,  607. 
insufficient,  how  proven  to  be,  519. 
meaning  of  the  word,  173,  217. 
oath  to,  122,  123. 

STANDARD  OF  COMPARISON, 

under  the  rule  in  Mowry  v.  Whitney,  732-734. 

STATES, 

power  of  over  patented  articles,  155. 


INDEX.  7,9 

STATE  COURTS, 

jurisdiction  of,  over  actions  to  enforce  or  set  aside  contracts  relevant 

to  patents,  388. 
jurisdiction  of,  over  creditors'  bills  filed  to  secure  debts  out  of  patent 

rights,  289. 
question  of  jurisdiction  of,  in  infringement  actions,  380-387. 

STATE  OF  THE  AET, 

affecting  questions  of  invention,  43. 
claims  construed  in  the  light  of,  184. 
evidence  of  experts  relevant  to,  500. 
mistake  relevant  to,  how  remedied.  220. 

STATUTES, 

special,  grafted  upon  general  statutes,  188. 

STATUTES  OF  LIMITATION, 

application  of,  to  actions  in  equity,  622. 

how  pleaded  in  actions  at  law,  471. 

how  pleaded  in  actions  in  equity,  622. 

the  national,  472-475. 

the  State,  476,  477. 

when  requiring  evidence  to  support  plea  of,  534. 

STOCKHOLDERS  IN  CORPORATIONS, 

as  defendants,  410,  411,  412,  415. 

STORY,  JUSTICE, 

opinion  of,  on  abandonment  of  patents,  107. 

opinion  of,  on  jurisdiction  of  State  courts  in  patent  cases,  382. 

opinion   of,   on  liability  of   officers,   directors,   and  stockholders  of 

corporations  for  corporate  infringement,  415. 
opinion  of,  on  patent  covering  thing  made  before  application,  158, 

159. 

STRONG,  JUSTICE, 

opinion  of,  on  force  of  Commissioner's  decision  in  reissue  cases,  22*2. 

SUB-COMBINATIONS, 

when  may  be  claimed  in  reissues,  though  not  claimed  in  originals, 

245. 

•  > 

SUBJECT  OF  PATENT, 

want  of  being,  how  pleaded  in  actions  at  law,  440. 
want  of  being,  how  pleaded  in  actions  in  equity,  598. 
want  of  being,  how  proven,  504. 

SUBSTANTIALLY, 

variant  force  of  the  word,  362. 

SUBSTANTIALLY  AS  DESCRIBED, 

function  of  the  phrase,  182. 
when  the  phrase  is  implied,  182. 


720  INDEX. 

SUBSTITUTION, 

as  affecting  infringement,  350,  370,  371. 

• 
SUGGESTIONS  TO  INVENTOES, 

distinguished  from  joint  invention,  47. 

SUPEKSEDEAS, 

on  appeal  to  Supreme  Court,  654. 

SUPPLEMENTAL  BILLS, 

leave  of  court  necessary  to  filing,  630. 
subordinate  to  original  bills,  624. 
when  proper,  625. 

SUPPLEMENTAL  BILLS  IN  THE  NATURE  OF  BILLS  OF  REVIEW, 
character  and  function  of,  647,  648. 

SUPREME  COURT  OF  THE  UNITED  STATES, 
action  of,  on  appeals,  656. 

action  of,  on  certificates  of  division  of  opinion,  657. 
application  to,  for  leave  to  file  in  court  below,  a  bill  of  review,  in  a 

case  already  sent  to  Supreme  Court,  652. 
hearing  of  appeals  in,  655. 
writs  of  error  in,  550. 

SUPREME  COURT  OF  THE  DISTRICT  OF  COLUMBIA, 
appeals  to,  132,  133. 

SUH-REJOINDERS, 

function  of,  in  actions  at  law  for  infringement,  478. 

SURRENDER  OF  INVENTIONS, 
how  effected,  105. 

SURRENDER  OF  LETTERS  PATENT, 

effect  of,  on  accrued  damages  and  profits,  231. 

mutual  owners  must  join  in,  252. 

when  reissue  is  refused,  231. 

with  a  view  to  reissue,  230-232. 
SUSPENSION, 

of  permanent  injunctions  pending  appeals,  703. 

SWAYNE,  JUSTICE, 

opinion  of,  on  force  of  Commissioner's  decision  in  reissue  cases,  223. 
opinion  of,  on  joint  invention,  46. 

TANET,  CHIEF-JUSTICE, 

opinion  of,  on  reissuability  of  patents,  226. 

TAXATION  OF  COSTS, 

appeal  from,  549. 

how  and  when  made,  549. 

TEMPORARY  RESTRAINING  ORDERS, 

pending  motions  for  preliminary  injiinctions,  664. 


INDEX.  721 

TENANCY  IN  COMMON, 

in  patent  rights,  292. 
TENANTS  IN  COMMON, 

rights  of,  294. 
TERM  OF  PATENT, 

how  fixed,  112. 
TERRITORY, 

covered  by  patents,  160. 
TEST  CASES, 

pendency  of,  excusing  delay,  684. 
TESTIMONY, 

in  actions  at  law,  535. 

in  actions  ia-equity,  638. 
TEXT-WRITERS, 

weight  of  statements  of,  537. 
TIME, 

for  taking  depositions  in  actions  in  equity,  639. 
TITLE, 

after  acquired,  282. 

by  assignment,  274. 

by  bankruptcy,  290. 

by  creditor's  bill,  289. 

by  death,  291. 

by  grant,  287. 

by  occupancy,  273. 

certainty  of,  necessary  to  preliminary  injunctions,  665,  675. 

conveyance  of  legal,  conveying  equitable,  286. 

conveyed  by  estoppel,  275. 

equitable,  how  arising,  274,  285. 

how  stated  in  declarations,  432. 

how  proven,  495. 

in  a  plurality  of  persons,  292. 

inchoate,  273. 

methods  of  acquisition  of,  272. 

to  reissues,  250. 

to  reissues  when  granted  to  executors  or  administrators,  251 

variant  nature  of,  272. 

want  of,  how  pleaded  in  actions  at  law,  464. 

want  of,  how  pleaded  in  actions  in  equity,  617. 

want  of,  how  proven,  529. 

warranty  of,  282. 

TRESPASS  ON  THE  CASE, 

actions  of,  for  infringements  of  patents,  418,  421. 
character  of  action  of,  442. 
declarations  in  actions  of,  422-438. 


722  INDEX. 

TRIALS, 

by  judges  without  juries,  540. 

by  juries,  488. 

by  juries  in  eqttity  cases,  642. 

by  juries  of  issues  sent  out  of  equity,  595. 

by  referees,  541. 

of  actions  at  law,  487. 

TEUSTEE, 

infringer  treated  as,  in  respect  of  his  profits,  715. 

TBUSTS, 

constructive,  285. 
resulting.  285. 

Two  YEARS, 

sale  or  public  use  more  than,  before  application,  93,  229. 

UNANIMITY  OF  JURIES, 
history  of,  488. 

UNAUTHORIZED  MARKING, 
how  punished,  325. 
how  restrained,  333. 

USEFUL  ART, 

subject  of  a  patent,  1. 

USES, 

all,  of  patented  thing,  covered  by  the  patent,  180. 

UTILITY, 

burden  of  proof  in  respect  of,  85. 

constituent  elements  of,  77. 

doubts  relevant  to,  85. 

in  respect  of  infringement,  376. 

may  reside  in  beauty,  80. 

must  be  stated  in  declarations,  424. 

necessary  to  patentability,  77. 

necessary  to  whatever  is  claimed  to  negative  novelty,  65. 

negatived  where  function  is  always  evil,  81. 

not  negatived  by  mere  imperfection,  79. 

patents  prima  fa cie  evidence  of,  85. 

performance  of  specified  function  necessary  to,  78. 

want  of,  how  pleaded  in  actions  at  law,  448. 

want  of,  how  pleaded  in  actions  in  equity,  601. 

want  of,  how  proven,  511. 

when  functions  are  thought  by  some  to  be  good,  and  by  others  to  ba 

evil,  83. 

where  functions  sometimes  work  good,  and  sometimes  work  evil,  82. 
where  primary  function  is  good,  and  ultimate  function  is  evil,  84. 


INDEX.  723 

VAT.TDITY, 

certificate  of  extension  prima  facie  evidence  of  its  own,  493. 
defendant's  admission  of,  when  foundation  of  right  to  preliminary 

injunction,  673. 

letters  patent  prima  facie  evidence  of  their  own,  491. 
reissues  prima  facie  evidence  of  their  own,  492. 
special  presumption  of,  necessary  to  preliminary  injunction,  6C5. 
warranty  of,  283,  284. 

VENUE, 

how  laid  in  declarations,  422. 

VERDICTS, 

in  patent  cases,  538. 

WALLACE,  JUDGE, 

opinion  of,  on  abandonment  of  patents,  107. 

opinion  of,  on  decree  where  disclaimer  is  found  necessary,  209. 

opinion  of,  on  subjects  of  patents,  5. 

WARRANTY, 

of  title,  282. 

of  validity,  283,  284,  307. 

WASHINGTON,  JUSTICE, 

opinion  of,  on  abandonment  of  patents,  106. 

opinion  of,  on  jurisdiction  of  State  courts  in  patent  cases,  383. 

WHEELER,  JUDGE, 

opinion  of,  on  actions  of  assumpsit  for  infringements  of  patents,  419. 
opinion  of,  on  decree  where  disclaimer  is  found  necessary,  209. 
opinion  of,  on  duration  of  patents  for  inventions  previously  patented 

in  a  foreign  country,  169. 

opinion  of,  on  force  of  Commissioner's  decision  in  reissue  cases,  223. 
opinion  of,  on  McClurg  v.  Kingsland,  159. 
opinion  of,  on  subjects  of  patents,  5. 

WITNESSES, 

to  specifications,  121. 

to  want  of  novelty,  need  not  be  named  as  such,  in  notices  of  special 
matter,  444. 

WOODBUBY,  JUSTICE, 

opinion  of,  on  rehearing  for  matter  apparent  on  face  of  record,  640. 

WOODRUFF,  JUDGE, 

opinion  of,  on  mode  of  operation,  345. 
opinion  of,  on  witness  fees  taxable  as  costs,  548. 

WOODS,  JUSTICE, 

opinion  of,  on  pleading  facts  of  which  courts  take  judicial  notice, 
445. 


2i  INDEX. 

WOBKMANSHD?, 

distinguishable  from  invention,  27. 

WEITS  OF  EKKOB, 

function  of,  550. 

in  qui  tarn  actions,  334. 

where  cases  are  tried  by  judges  without  juries,  540. 

WEONUS, 

classification  of,  411, 

of  infringement,  where  treated  in  this  book,  378. 


INDEX  TO  FORMS  AND  EQUITY  RULES. 


ABANDONMENT,  BULK  PAOB 

of  allowance  of  amendment  of  bill 30  656 

ACCOUNT, 

form  of,  to  be  submitted  to  masters 79  673 

AFFIDAVIT, 

of  service  of  process 15  650 

supporting  motion  to  amend  bill  after  replication. ...  29  655 

supporting  motion  to  set  aside  decree  pro  confesso. ...  19  652 

AFFIBMATION, 

in  lieu  of  oath 91  676 

AMENDMENT, 

of  answers 60  664 

of  bills  after  allowance  of  demurrer    35  657 

of  bills  after  defendants'  pleading  and  before  replica- 

tion..-. 29,45  jjjg 

of  bills  after  replication 29  655 

of  bills  before  defendants'  pleading 28  <'•'•'< 

of  bills  by  adding  parties -62  662 

of  bills,  when  to  be  made  after  allowance 30  ''•'••'• 

ANSWEB, 

amendment  of 60  •'•  •  I 

defences  pleadable  in 39  658 

exceptions  to 61  665 

form  of. 641 

separate,  when  improper 62 

to  amendment  of  bill 46 

tocrossbill 72  670 

to  supplemental  bill 67 

used  as  affidavit,  when ...  41  ''•  s 

verified  before  whom . .                    59  •  •  t 


726  INDEX   TO    FOKMS   AND    EQUITY    RULES. 

APPEAKANCE,  BULE  PAGE 

of  defendants,  when  due 17  651 

of  nominal  defendants 54  662 

ATTACHMENT, 

/  />fr-j 

writ  of,  to  compel  answer 18,  64 

writ  of,  to  enforce  order  or  decree 7,  8  648 

BILL, 

address  of 20  652 

amendment  of,  after  answer 29,  45  •<  ,, 

amendment  of,  after  replication 29  655 

amendment  of,  before  answer 28  655 

amendment  of,  by  adding  parties 52  662 

charging  part  unnecessary  in 21  652 

confederacy  part  unnecessary  in 21  652 

effect  of  waiving  answer  under  oath  in 41  658 

form  of 634 

frameof 20  652 

impertinence  in 26  654 

interrogating  part  of 40,  41,  43  658 

introductory  part  of 20  652 

jurisdiction  part  unnecessary  in 21  652 

must  be  filed  before  subpoena  can  issue 11  649 

nominal  parties  to 54  662 

prayers  of .... , 21  652 

requisite    statement    of,    when    filed  by   stockholder 

against  corporation  and  other  parties 94  676 

scandalous  matter  in 26  654 

signature  of  counsel  to 24  654 

stating  part  of 21  652 

taken  pro  confesso 18  651 

BILL  IN  THE  NATURE  or  A  BILL  OF  REVIVOB, 

when  necessary 56  663 

BILL  IN  THE  NATURE  OF  A  SUPPLEMENTAL  BILL, 

when  necessary 57  664 

BILL  OF  KEVTVOB, 

statements  of 58  664 

when  necessary 56  663 

CIEOUIT  COURTS, 

always  open  for  certain  purposes 1  646 

power  of,  to  make  addditional  rules 89  675 

CLEBKS  OF  CIRCUIT  COURTS, 

power  of,  to  grant  certain  motions 5  647 


INDEX   TO    FORMS    AND    KQUITY    RULES.  727 

COSTS,  BULB  PAOE 

for  bill  or  answer 25  654 

on  allowing  demurrer  or  plea   35  657 

on  exceptions  to  master's  report 84  674 

on  hearing  of  exceptions  to  answer 65  '  '•• ' 

on  neglect  to  prosecute  reference  to  master 74  671 

on  overruling  demurrer  or  plea 34  657 

CROSS  BILL, 

proceedings  upon 72  670 

DECLARATION, 

form  of 626 

DECREE, 

form  of 86  674 

how  enforced 7,  8  648 

in  cases  where  part  of  interested  persons  are  out  of 

jurisdiction 47  660 

in  cases  where  part  of  numerous  interested  persons 

are  not  made  parties .'....       48  661 

in  foreclosure  cases 92  676 

pro  confesso,  how  entered 18  651 

pro  confesso,  how  set  aside 19  652 

reference  to  master  in 73 

when  correctable  without  rehearing 85  674 

where  objection  of  want  of  parties  is  first  made  at  the 

hearing 63 

DEMURRER, 

effect  of  allowing 35 

effect  of  overruling 34 

necessity  of  setting  down  for  argument 38 

not  overruled  for  narrowness.  . . . , 

not  overruled  for  sameness  with  answer. .'. 37 

prerequisites  to  filing 

setting  down  for  argument 

to  supplemental  bills 67 

DOCKET, 

suits  when  entered  upon 18 

EVIDENCE, 

used  before  masters 80 

EXCEPTIONS  TO  ANSWERS, 

pi  rrn 

allowance  of 

hearingof M 


overruling  of. 


66  Ml 

setting  down  for  hearing 

whentobe  filed 61 


728  INDEX   TO    FORMS    AXD    EQUITY    RULES. 

EXCEPTIONS  TO  MASTERS'  REPOBTS,  RULE        PAGE 

filed  when 83             674 

heard  when 83            674 

FOEM, 

of  answer 641 

of  bill 634 

of  declaration 626 

of  plea  in  equity 639 

of  plea  at  law 629 

of  replication  in  equity 645 

of  replication  at  law 632 

of  rejoinder. . . 633 

of  sur-rejoinder 634 

GUARDIANS, 

adlitem 87            675 

as  parties 87            675 

HEARING,  » 

before  masters 74,  77          *  ^Ii 

( o/^ 

of  demurrers 34-37  657 

of  exceptions  to  answer 63,  64  665 

of  exceptions  to  master's  report 83             674 

of  motions 6             648 

of  motions  for  injunctions 55            663 

of  motions  for  leave  to  file  supplemental  bills 57            664 

of  pleas 34-37  657 

want  of  parties  suggested  at 53            662 

what  testimony  read  at 69            669 

INJUNCTIONS, 

duration  of 55            663 

motion  for 55            663 

prayerfor 21            652 

suspension  of,  pending  appeal 93            676 

when  granted  on  a  default 55            663 

INTERLOCUTORY  ORDERS, 

power  of  judges  to  make 3            646 

• 

INTERROGATORIES, 

when  need  not  be  answered 44            660 

JUDGES, 

power  of,  to  make  interlocutory  orders 3            646 

power  of,  to  suspend,  alter,  or  rescind  orders  made  by 

clerks..  5            647 


INDEX   TO    FORMS    AXD    EQUITY    RULES.  729 

LACHES,  nrijj  PAOE 
fatal  to  motions  for  leave  to  amend  bill  after  replica- 
tion   29  »;:,.-, 

fatal  to  order  giving  permission  to  amend  bill :!ti  ^  <;;,r. 

fatal  to  order  referring  bill  to  master  for  scandal  or  im- 
pertinence    27  !'.."•  I 

MASTEKS  IN  CHANCERY, 

compensation  of 82  (',7:1 

examining  bills  for  scandal  or  impertinence 26  i',:>  i 

exceptions  to  reports  of . . .   83  074 

how  appointed 82  (',7:! 

proceedings  before 74-82  <>71 

references  to 73  670 

statements  in  reports  of 76  c-71 

MOTIONS, 

for  injunctions 55  ''.i;:i 

to  amend  answers 60  <;<;  I 

to  amend  bills 29  »'•">."» 

to  extend  time  for  taking  testimony 69  <'><;'• 

to  file  replications,  mine  pro  tune 66  CiC.i; 

to  file  supplemental  bill 57  <'ii;i 

to  set  aside  decrees  pro  confesso 19  652 

when  grantable  by  clerks 5  647 

when  grantable  only  by  judges 6  '  •  1 » 

NOTE, 

to  interrogatories  in  bill 41, 42  '  "^ 

NOTICE, 

constructive,  of  orders,  rules,  and  proceedings 4  647 

of  motion  for  injunction 55  <^:t 

of  motion  to  amend  answer 60  «".<;  I 

of  motion  to  amend  bill 29  u.V. 

of  motion  to  file  supplemental  bill  57  ''<'•  I 

of  proceedings   before  masters 75-78  (171 

to  take  evidence 67,  68,  70 


to  order  of  court,  how  compelled 7-10 

/  til.* 


OBEDIENCE, 
to  01 

ORDER  BOOK, 

entry  of  defendant's  appearance  upon 17 

how  kept * 

PABTTES, 

guardians  as 

heirs-at-law  as ,     M 

nominal..  «  "- 


730  INDEX   TO    FORMS   AND   EQUITY   BULES. 

PARTIES,                                                                                                BTJLE  PAGE 

objections  for  want  of 52  662 

trustees  as '. . .  49  661 

vh^re  a  plurality  of  persons  are  jointly  and  severally 

liable 51  662 

where  interested  persons  are  out  of  the  jurisdiction. . .  47  660 

where  interested  persons  are  very  numerous 48  661 

PLEA, 

effect  of  allowance  of 35  657 

effect  of  overruling  of 34  657 

effect  of  proof  of  truth  of 33  657 

form  of,  in  equity 

form  of,  at  law 629 

necessity  of  replication  to,  or   setting  down  for  argu- 
ment    38  658 

not  overruled  for  narrowness 36  657 

not  overruled  for  sameness  with  answer 37  657 

prerequisites  to  filing 31  656 

setting  down  for  argument  33  657 

taking  issue  upon 33  657 

to  supplemental  bills 57  664 

PLEADING, 

of  defendants,  varieties  of 32 

of  defendants,  when  due 18  651 

PRACTICE, 

when  governed  by  that  of  the  High  Court  of  Chancery 

in  England 90  676 

PBAYEBS, 

for  general  relief 21  652 

21  23  ^652 

for  injunctions **«  *a  1  653 

for  process  against  persons  without  the  jurisdiction . .  22  653 

for  special  relief 21 

for  subpoena  ad  respondendum 23  653 

0  oq  ^652 

for  writ  of  ne  exeat »li  "°  -J  553 

PEOCESS, 

by  whom  served 15 

varieties   of..             7  648 


PEOCHIEN  AMIS, 
as  p; 

BEHEAEING, 


as  parties - 87  675 


petitions  for • 

when  grantable 88  675 

REJOINDER, 

formof G33 


INDEX   TO   FORMS   AND   EQUITY   RULES.  731 

REPLICATION,  BUIJ[  PAOE 

effect  of  filing 66  >;>;<\ 

effect  of  omission  to  file 60  »'»;•'. 

form  of,  in  equity 41       645 

form  of,  at  law 632 

no  special,  allowed 45  660 

when  to  be  filed 66  666 

RULE  DAY, 

the  first  Monday  of  every  month 2  646 

SUBPOENA  AD  RESPONDENDDM, 

how  served 13  650 

toties  quoties 14  650 

when  issued 12  650 

when  returnable 12  650 

SUBPOSNA  AD  TESTIFICANDUM, 

how  issued  and  enforced 78  672 

SUPPLEMENTAL  BILLS, 

statements  in 58  664 

when  necessary 57  664 

SUB-BEJOINDEB, 

form  of 634 

TESTIMONY, 

debeneesse 70  669 

how  taken  in  general 67-71  667 

(  672 
how  taken  before  masters 77,  78,  81 

TBUSTEES, 

as  parties 49  661 

WITNESSES, 

attendance  of,  how  compelled 67,  78 

WBTTS, 

of  assistance 7,  9 


of  attachment 7,  8,  18,  64  681 

[666 

of  execution 8  '  I  ^ 

\  ''•"'- 

of  injunction. .  21,23,55         -{653 

[661 

irv 
i   ',.! 

of  sequestration 7,  8 


